950e.doc cc: Director General HGB/rhl Mr. Gurry Chrono … · cc: Director General Mr. Gurry Mr ... Ms. Trpkovska Chrono PCT ELRS C.PCT 950 21.1 October 24, 2003 ... paragraph 18A

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N:\Orgpctl\Shared\PCT-circ\950\950e.docHGB/rhl

Circular to PCT Receiving Offices:revised PCT Receiving Offices Guidelines

cc: Director GeneralMr. GurryMr. ErstlingMs. BoutillonMr. Bryan/Mr. Carrasco PradasMr. H. G. Bartels/Mr. GeninMs. Schwarz/Ms. Bisi-KurkdjianMs. TrpkovskaChrono PCT ELRS

C.PCT 950 21.1

October 24, 2003

Madam,Sir,

This Circular is addressed to your Office in its capacity as a receivingOffice under the Patent Cooperation Treaty (PCT) for the purposes ofconsultation on proposed modifications to the Receiving Office Guidelines. Theproposed modifications are consequential to various amendments to the PCTRegulations as outlined below.

It is recalled that the PCT Union Assembly at its thirty-first(18th extraordinary) session, held from September 23 to October 1, 2002, and itsthirty-second (14th ordinary) session, held from September 22 to October 1, 2003,approved certain amendments to the Regulations under the PCT and to theSchedule of Fees annexed to the PCT Regulations that entered into force onJanuary 1, 2003, and January 1, 2004 (see documents PCT/A/31/10 andPCT/A/32/8). As a consequence of those amendments, the AdministrativeInstructions under the PCT were modified with effect as of January 1, 2003, (seePCT Gazette No. 25/2003) and will be further modified with effect as of January 1,2004. It is also recalled that modifications to Part 8 of the AdministrativeInstructions under the PCT were made in September 2002 relating tointernational applications containing large nucleotide and/or amino acid sequencelistings and/or tables relating thereto.

A summary of the proposed modifications is set out in Annex I to thisCircular. The proposed modified text of the Receiving Office Guidelines is setout in Annex II to this Circular. The Annexes to the Receiving Office Guidelineswill be modified according to the proposed modifications to the Guidelines andto the comments and observations received in the course of the presentconsultation. Please note that further necessary modifications relating to

./.

./.

C.PCT 950 2. 21.1

electronic filing of international applications are being finalized and will beprovided as soon as they are available.

Proposed additions and deletions are indicated, respectively, by underliningand striking through the text concerned. Some modifications are of a mereeditorial nature.

The International Bureau would appreciate receiving your observationsand/or comments on the proposed modifications by November 15, 2003,preferably by e-mail to [email protected] or by fax to (+41-22) 910 00 30, witha view to making the final version available as soon as possible.

Yours sincerely,

Francis GurryAssistant Director General

Enclosures: Annex I: Summary of proposed modifications to the PCTReceiving Office GuidelinesAnnex II: Proposed Modified Text of the Receiving OfficeGuidelines

Annex I to Circular C. PCT 950

Summary of proposed modifications to the PCT Receiving Office Guidelines

Modifications of a substantive nature and drafting/editorial changes areproposed in respect of the following issues (which, for convenience, are citedunder the following headings):

(a) Concerning international applications with a sequence listing part filed inelectronic form:

paragraphs 148, 149, 222, 222A, 224, 226, 226A, 226B, 226C, 227, 241A,284B, 284C, 284D, 284E, 290, 302 and 307 are modified in consequence ofthe modifications made in September 2002 to Part 8 of the AdministrativeInstructions under the PCT to incorporate a reference to tables related to asequence listing, which now can be filed in electronic form.

(b) Concerning the language of the international application, the request andtranslations:

paragraphs 21, 31, 55, 58, 59, 60, 63, 67, 68, 69, 70, 71, 135, 136, 236 and285 are modified, and new paragraphs 67A and 69A are introduced inconsequence of the amendments to Rules 12 and 48.3.

(c) Concerning the new designation system:

paragraphs 42, 54, 75A, 79, 82, 86, 95, 98, 100, 101, 102, 108, 111, 122,123, 129, 153, 159, 192C, 229, 265, 273, 294, 314, 322, 326, 330 have beenmodified, paragraphs 84A, 116A, 122A have been introduced, andparagraphs 92, 94, 103,104, 105, 106, 107, 109, 112, 131, 250, 251, 256,296, 297, 298, 299, 300, 301 have been deleted in consequence of themodification of Rules 4, 26.2bis, and 49bis, and the introduction ofRule 54bis.

(d) Concerning the introduction of an international filing fee replacing the oldfee structure:

paragraphs 50, 165B, 165D, 165J, 165L, 166, 235, 236, 241, 241A, 246A,247, 249, 249A, 253, 259, 262, 264, 266, 267, 268, 272, 273, 276 have beenmodified and paragraphs 242, 243, 244, 245, 246, 255, 255A, 260, 261have been deleted in consequence of the amendments to Rules 15, 16bis.2,27.1 and the Schedule of Fees.

Annex I to Circular C.PCT 950page 2

(e) Concerning agents, common representatives, and powers of attorney:

paragraphs 23, 121, 124, 125, 125A, 311 have been amended andparagraphs 117B, 117C, 122A have been introduced in consequence of theamendment to Rule 90.2, 90.4 and 90.5.

(f) Concerning certain changes of a consequential nature or of mere editorialnature:

(i) in paragraph 11 a typographical error has been corrected;

(ii) paragraph 18A has been modified to include a cross-reference toparagraphs 165A to 165M;

(iii) paragraph 19 has been amended in consequence of theamendment to Rule 80.5;

(iv) paragraphs 28, 30, 48, 76, 120, 160, 191, 248, 309A, 331 havebeen modified to clarify the procedure referred to therein;

(v) in paragraph 35 the cross-reference has been corrected;

(vi) in paragraph 133 in the 1st line, an extra bracket afterRule 48.3(a) at the end of the first line has been deleted because the contentof the bracket continues and should read: “(Rule 48.3(a) andparagraph 55)”;

(vii) paragraph 143 has been modified in consequence of themodification to Section 404.

[Annex II follows]

Annex II to Circular C. PCT 950

PCT/GL/RO/23 Prov.

PCT Receiving Office Guidelines(as in force from 18 January 20022004)

TABLE OF CONTENTS

Paragraphs

Chapter I: Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1 to 13

Chapter II: General . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14 to 31

Marking of the Sheets of the International Application, Documentsand Correspondence Relating Thereto. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14

Use of Facsimile Machine, Teleprinter, Telegraph and Other LikeMeans of Communication; Date of Receipt . . . . . . . . . . . . . . . . . . . . . . . . 15 to 18

Handling of Requests Prepared Using the PCT-EASY Software . . . . . . . . . . 18A

Computation of Time Limits . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 19

Documents and Correspondence . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 20 to 27Documents and Correspondence Submitted by the Applicant . . . . . . . . . 20 to 22Correspondence Intended for the Applicant . . . . . . . . . . . . . . . . . . . . . . 23 to 26Mailings by Receiving Offices . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 27

Irregularities in the Mail Service . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 28 to 30Delay or Loss in the Mail of a Letter Document or Letter DocumentSent by the Applicant . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 28Use of Delivery Services . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 29Interruption in the Mail Service . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 30

Forms . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 31

Chapter III: National Security Clearance . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 32 to 34

Chapter IV: Article 11(1) Check; Requirements forInternational Filing Date . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 35 to 54

Receipt of Purported International Application . . . . . . . . . . . . . . . . . . . . . . 35 to 38Marking . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 35 and 36Confirmation Copy of Facsimile Transmission . . . . . . . . . . . . . . . . . . . 37 and 38

Requirements for According an International Filing Date (Article 11(1)) . . 39 to 42Right to File . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 40Language . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 41Other Minimum Requirements . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 42

Positive Determination (Requirements of Article 11(1) Fulfilled) . . . . . . . . 43 and 44According of International Filing Date. . . . . . . . . . . . . . . . . . . . . . . . . . . 43Notification of Applicant . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 44

Negative Determination (Requirements of Article 11(1) Not Fulfilled) . . . . 45 to 51Invitation to Correct . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 45Time Limit . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 46 and 47Positive Determination . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 48 and 49Negative Determination. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 50Error by the Receiving Office . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 51

Annex II to Circular C.PCT 950

PCT/GL/RO/2 3 Prov.page 2

Later Finding of Non-Compliance with Requirements of Article 11(1) . . . . . 52 to 54

Chapter V: Language Check (Article 3(4)(i); Rules 12.1, 12.3, 12.4 and 26.3ter) . 55 to 71

General . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 55 to 58

Language of Request . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 59 to 61Requirements . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 59Correction of Defects . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 60Failure to Correct . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 61

Language of Abstract and Text Matter of the Drawings . . . . . . . . . . . . . . . 62 to 65Requirements . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 62Correction of Defects . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 63 and 64Failure to Correct . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 65

Language(s) Accepted for the Purposes of International Search andInternational Publication . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 66 to 71

Requirements of the Competent International Searching Authority asto the Language of the International Application . . . . . . . . . . . . . . . . . . 66Language Not Accepted for the Purposes of International Search . . . . . . 67 and 68Language Not Accepted for the Purposes of International Publication ....... 67AInvitation to Furnish Translation for the Purposes of International Searchand Late Furnishing Fee . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 69Invitation to Furnish Translation for the Purposes of InternationalPublication and Late Furnishing Fee ........................................................... 69AChecking of Translation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 70Failure to Furnish the Required Translation . . . . . . . . . . . . . . . . . . . . . . 71

Chapter VI: Article 14 Check and Other Formal Requirements . . . . . . . . . . . . . . 72 to 165

General . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 72 to 74

Formal Requirements . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 75 to 152

Form of the Request . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 75 to 75B

Applicant’s File Reference . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 76

Title of the Invention . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 77

Indications in the Request Concerning Applicant and Inventor . . . . . . . . . . 78 to 99Indications Concerning the Applicant . . . . . . . . . . . . . . . . . . . . . . . . . . 78 to 87

Names and Addresses . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 79 to 81Nationality and Residence . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 82 to 86Dependent Territories and Other Entities Not Being States . . . . . . . . 87 and 87A

Indications Concerning the Inventor . . . . . . . . . . . . . . . . . . . . . . . . . . . 88 to 90

Indications Concerning Applicant and Inventor Where theUnited States of America Is Designated . . . . . . . . . . . . . . . . . . . . . . . . . 91 to 94and 93

Different Applicants or Inventors for Different Designated States . . . . . 95

Indications in the Case of a Deceased Applicant or Inventor . . . . . . . . . 96 to 99

Designation of States . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 100 to 107102States . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 100 and 101States Not Listed Bound by the PCT on Printed Request Form the International FilingDate . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 102 to 105Precautionary Designation of States Under Rule 4.9(b) . . . . . . . . . . . . . 106



Extension of European Patents . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 107

Kind of Protection of Treatment . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 108 to 112111

Non-Prejudicial Disclosure . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 113

The Competent International Searching Authority . . . . . . . . . . . . . . . . . . . 114 and 115

Reference to Earlier Search, Continuation or Continuation in Part, or Patent Applicationor Grant . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 116 and 116A

Agent, Common Representative and Address for Correspondence . . . . . . . 117 to 121

Signature . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 122 to 131130Request Signed by Agent or Common Representative . . . . . . . . . . . . . . 124 to 125AAuthorization to Sign on Behalf of a Legal Entity . . . . . . . . . . . . . . . . . 126 to 128Applicant/Inventor for the United States of America Refuses to Sign orCannot Be Found or Reached . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 129 to 131130

Compliance with the Physical Requirements Referred to in Rule 11 . . . . 132 to 146General . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 132 to 138Arrangement of Elements and Numbering of Sheets . . . . . . . . . . . . . . . 139 and 140Writing of Text Matter . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 141Requirements Concerning Margins . . . . . . . . . . . . . . . . . . . . . . . . . . . . 142 and 143Line Numbering Sequence . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 144Other Physical Requirements Concerning Text . . . . . . . . . . . . . . . . . . . 145Drawings and Photographs . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 146

Abstract . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 147

Appendices . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 148

Check List . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 149 to 152Indications Made by the Applicant . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 149Annotations by the Receiving Office . . . . . . . . . . . . . . . . . . . . . . . . . . . 150 to 152

Corrections of Defects . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 153 to 165

Corrections Under Article 14(1)(b) and Rule 26 . . . . . . . . . . . . . . . . . . . . . 153 to 159Invitation to Correct . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 153 to 155Procedure to Correct . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 156 to 158Failure to Correct Under Article 14(1)(b) and Rule 26 . . . . . . . . . . . . . . . 159

Correction of Other Formal Defects . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 160

Ex Officio Corrections . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 161 to 165Defects Which May Be Corrected Ex Officio . . . . . . . . . . . . . . . . . . . . . 162Manner of Correcting Defects Ex Officio . . . . . . . . . . . . . . . . . . . . . . . . 163Making Ex Officio Corrections in Requests in PCT-EASY Format . . . . . 163ANotification About Ex Officio Correction . . . . . . . . . . . . . . . . . . . . . . . . 164 and 165

Chapter VIbis: Requests in PCT-EASY Format 165A to 165MGeneral . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 165A and 165B

Requirements for Requests in PCT-EASY Format . . . . . . . . . . . . . . . . . 165AFee Reduction Applicable Where PCT-EASY Software Is Used . . . . . . 165B

Receiving Office Review of PCT-EASY Requests . . . . . . . . . . . . . . . . . . . 165C to 165EAcceptance by Receiving Office of Request in PCT-EASY Format . . . . 165CNon-acceptance by Receiving Office of Request in PCT-EASY Format;Transmittal of International Application Under Rule 19.4(a)(iii) . . . . . 165D and 165E



Correction of Defects in PCT-EASY Requests . . . . . . . . . . . . . . . . . . . . . . 165F to 165MChecking of Request in PCT-EASY Format . . . . . . . . . . . . . . . . . . . . . . 165F to 165HRequest Not in PCT-EASY Format Filed with PCT-EASY Diskette . . . 165I and 165JCorrection of Request in PCT-EASY Format . . . . . . . . . . . . . . . . . . . . . 165KRequest in PCT-EASY Format Filed Without PCT-EASY Diskette . . . . 165LPCT-EASY Diskette Is Defective or Incomplete . . . . . . . . . . . . . . . . . . 165M

Chapter VII: Priority Claims and Priority Documents . . . . . . . . . . . . . . . . . . . . . 166 to 192

Requirements for Priority Claims . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 166

Requirements Not Fulfilled . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 167 to 172Invitation to Correct . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 167 and 168Time Limit for Correction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 169Correction by Applicant . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 170Failure to Correct . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 171 and 172

Correction or Addition of Priority Claim on the Applicant’s Own Initiative 173 to 178

Transmittal to the International Bureau of a Priority DocumentFurnished by the Applicant . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 179 to 182

Certification of an Earlier Application and Transmittal to theInternational Bureau . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 183 to 191

Effect of a Change of Priority Date . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 192

Chapter VIIbis: Declarations Relating to National Requirements . . . . . . . . . . . . 192A to 192F

Requirements for Declarations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 192A to 192C

Requirements Not Fulfilled . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 192D

Correction or Addition of Declarations . . . . . . . . . . . . . . . . . . . . . . . . . . . . 192E and 192F

Chapter VIII: Drawings Not Included in the International Application;Other Later Submitted Sheets . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 193 to 221

Drawings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 193 to 199

Reference to Drawings in the International Application . . . . . . . . . . . . . . . 193 and 194

Notification of Applicant . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 195 and 196

Later Receipt of Drawings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 197 and 198

Procedure Where No Drawings Are Received in Response tothe Notification . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 199

Sheets Completing the International ApplicationOther than Drawings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 200 to 207

Sheets Completing the Purported International Application Before anInternational Filing Date Has Been Accorded . . . . . . . . . . . . . . . . . . . . . . . 200 to 203

Time Limit . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 201Date of Receipt . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 202 and 203

Sheets Completing the International Application After an InternationalFiling Date Has Been Accorded . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 204 to 206

Time Limit . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 204Date of Receipt . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 205 and 206

Later Receipt of Abstract . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 207



Substitute Sheets under Rule 26 and other Replacement Sheets . . . . . . . . . . . . . . . . 208 to 221

Substitute Sheets Under Rule 26 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 208 and 209

Other Replacement Sheets . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 210 and 211

Replacement Sheets of the Request Submitted Together with Requestfor Recording of Change . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 212

Rectified Sheets . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 213

Procedure in the Case of Correction of Defects Under Rule 9, 26 or 91.1 . . 214 to 216

Replacement Sheet Containing Correction Under Rule 26 andRectification of Obvious Error Under Rule 91.1 . . . . . . . . . . . . . . . . . . . . . 217 to 221

Chapter IX: Nucleotide and/or Amino Acid Sequence Listings Listing- and/orTable(s) Relatinged Thereto . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 222 to 227

General . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 222 and 222A

Sheets Containing Sequence Listings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 223 and 224

Sheets Not Numbered or Incorrectly Numbered . . . . . . . . . . . . . . . . . . . . . 225

Sequence Listings and/or Table(s) in Computer Readable Form . . . . . . . . . 226 to 226C

Subsequently Furnished Sequence Listings and/or Table(s) in Paper Form . 227

Chapter X: References to Deposited Microorganisms orOther Biological Material . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 228 to 234

General . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 228

References to Deposited Microorganisms or Other Biological Materialas Part of the Description . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 229 to 233

Requirements as to the Language of Sheets Containing References toDeposited Microorganisms or Other Biological Material . . . . . . . . . . . . . . . 234

Chapter XI: Fees . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 235 to 273

General . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 235 and 236

Amounts, Prescribed Currencies and Reductions of Certain Fees . . . . . . . . 237 to 251249AThe Transmittal Fee . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 237The Search Fee . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 238 to 240The International Filing Fee . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 241 to 251

The Basic Fee . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 241 and 241AThe Designation Fee . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 242 to 245Maximum Number of Designation Fees Payable . . . . . . . . . . . . . . . . 246Reduction of Fee Where the Request Is FiledUsing PCT-EASY Software . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 246AReduction of International Filing Fee for Applicants from Certain States 247 to 249AFees for Confirmation of Precautionary Designations . . . . . . . . . . . . 250 and 251

Time Limits for Payment . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 252 to 257

Notification Concerning Payment of Fees Before the Date onWhich They Are Due . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 258

Invitation to Pay Fees After the Date on Which They Are Due . . . . . . . . . . 259 to 265Late Payment Fee . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 264 and 265



Application of Moneys Received . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 266

Failure to Pay the Prescribed Fees Under Article 14(3) . . . . . . . . . . . . . . . . 267

Refund of Fees . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 268 to 271

Transfer of Fees . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 272 and 273

Chapter XII: Transmittal of International Application toInternational Bureau as Receiving Office (Rule 19.4) . . . . . . . . . . . . . . . . . . . . . . 274 to 282

Transmittal of International Application for Reasons of Nationalityand Residence of the Applicant or Language of the Application(Rule 19.4(a)(i) and (ii)) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 274 to 277

Transmittal of International Application for Other Reasons(Rule 19.4(a)(iii)) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 278 to 281

Request for Priority Document . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 282

Chapter XIII: Record Copy, Search Copy and Home Copy . . . . . . . . . . . . . . . . . 283 to 295

Preparation of Record Copy, Search Copy and Home Copy . . . . . . . . . . . . 283 to 284EGeneral . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 283 and 284Requests in PCT-EASY Format . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 284AInternational Applications Containing a Sequence Listings and/orTable(s) in Computer Readable Form . . . . . . . . . . . . . . . . . . . . . . . . . . 284B to 284E

Transmittal to the International Bureau of the Record Copy of theInternational Application and Other Items . . . . . . . . . . . . . . . . . . . . . . . . . . 285 to 287

Items to Accompany the Record Copy . . . . . . . . . . . . . . . . . . . . . . . . . . 285 and 285ATime Limit for Transmittal of the Record Copy . . . . . . . . . . . . . . . . . . . 286Failure to Transmit the Record Copy . . . . . . . . . . . . . . . . . . . . . . . . . . . 287

Transmittal to the International Searching Authority of the SearchCopy and Other Items . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 288 to 293

General . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 288 and 289Items to Accompany the Search Copy . . . . . . . . . . . . . . . . . . . . . . . . . . 290Time Limit for Transmittal . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 291Failure to Pay the Search Fee; Delayed Transmittal of the SearchCopy . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 292 and 293

Documents and Diskettes Not to Be Transmitted tothe International Searching Authority . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 294

National Security Clearance . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 295

Chapter XIV: [Deleted] Confirmation of Precautionary Designations . . . . . . . . . 296 to 301

Requirements for Confirmation Under Rule 4.9(c) . . . . . . . . . . . . . . . . . . . 296

Requirements Fulfilled . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 297 to 299

Requirements Not Fulfilled . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 300 and 301

Chapter XV: Rectification of Obvious Errors Under Rule 91.1 . . . . . . . . . . . . . . . 302 to 308

Request for Rectification Submitted to the Receiving Office . . . . . . . . . . . . 302 to 306Decision of Receiving Office . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 302 and 303Notification of Applicant and International Bureau . . . . . . . . . . . . . . . . 304 and 305Refusal of Authorization of Rectification . . . . . . . . . . . . . . . . . . . . . . . . 306



Transmittal to Another Authority of a Request for Rectification . . . . . . . . . 307

Invitation to the Applicant to Request Authorization of Rectification . . . . . 308

Chapter XVI: Changes Concerning the Applicant, Inventor,Agent or Common Representative . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 309 to 313312

Receipt of Request to Record a Change . . . . . . . . . . . . . . . . . . . . . . . . . . . 309 to 311

Notification of International Bureau . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 312 and 313

Chapter XVII: Withdrawal of the International Application,any Designation or any Priority Claim . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 314 to 324

Receipt of Notice Effecting Withdrawal of the InternationalApplication, any Designation or any Priority Claim UnderRule 90bis.1, 90bis.2 or 90bis.3 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 314 to 321

Transmittal of Notice Effecting Withdrawal . . . . . . . . . . . . . . . . . . . . . . . . 322 to 324

Chapter XVIII: Items to Be Transmitted to Another Authority . . . . . . . . . . . . . . . 325 to 332

Items to Be Transmitted to the International Bureau . . . . . . . . . . . . . . . . . . 325 to 327

Transmittal of Demand Under Rule 59.3 . . . . . . . . . . . . . . . . . . . . . . . . . . . 328 to 332

Chapter XIX: Miscellaneous . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 333 to 338

Expressions Not to Be Used (Rule 9) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 333

Certifying Copies of the International Application . . . . . . . . . . . . . . . . . . . 334

Notification About Right to Practice of Agent Before Receiving Office . . . 335

Keeping of Records and Files . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 336

Completion of Technical Preparations for International Publicationby the International Bureau . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 337

Certain Kinds of Documents to Be Returned to the Applicant . . . . . . . . . . . 338



CHAPTER IINTRODUCTION

1. These Guidelines are intended to assist receiving Offices in carrying out the duties entrustedto them under the Patent Cooperation Treaty (PCT) and provide them with reference materialthat can assist them in processing international applications under the PCT. They describe thetasks of a receiving Office in relation to relevant PCT procedures.

2. The Guidelines recommend to receiving Offices a system for carrying out their duties underthe PCT. Applying that system to the extent possible is of great importance in order to ensureuniform processing of all international applications by all receiving Offices. However, theGuidelines do not cover all possible procedures within a receiving Office and not all tasksreferred to need to be performed with regard to each international application. Rarely occurringor particularly complex situations have not been included.

3. For complete information, consultation of the official texts, particularly the PCT itself, theRegulations under the PCT and the Administrative Instructions under the PCT, is indispensable.In case of any inconsistency with these Guidelines, it is those texts which apply.

4. References in these Guidelines to “Articles” are references to those of the Treaty, to “Rules”to those of the Regulations under the PCT, to “Sections” to those of the AdministrativeInstructions under the PCT, and to paragraphs to those of these Guidelines. The forms to beused by the receiving Office are contained in Part I of Annex A to the AdministrativeInstructions.

5. These Guidelines contain in some cases references to the Notes to the request form(Form PCT/RO/101); they also contain references to the PCT Applicant’s Guide to the extentthat they appear to be useful for receiving Offices to carry out their duties.

6. References to “national” Office, “national” phase and “national” fees cover also theprocedure before a regional patent Office.

7. A reference to “national law” includes reference to a regional treaty such as the Protocol onPatents and Industrial Designs within the framework of the African Regional Industrial PropertyOrganization (the “ARIPO Harare Protocol”), the Eurasian Patent Convention, the EuropeanPatent Convention, or the Agreement establishing the African Intellectual Property Organization(the “OAPI Agreement”).

8. The expression “international phase,” which is not used in the Treaty or the other officialtexts mentioned above but which has become customary, is commonly used as opposed to thesubsequent “national phase” of processing before the national or regional Offices. Theinternational phase encompasses the period from the filing of the international application bythe applicant and its processing by the receiving Office, the establishment of the internationalsearch report and written opinion by the International Searching Authority, and the internationalpublication of the international application by the International Bureau. It also comprises the(optional) international preliminary examination procedure before the International PreliminaryExamining Authority.



9. Whenever the word “applicant” is used, it shall be construed as meaning also the agent (orcommon representative, where applicable) of the applicant, except where the contrary clearlyfollows from the wording or the nature of the provision, or the context in which the word isused, for example, in those parts of the Guidelines which deal with representation.

10. The various tasks which a receiving Office may be required to perform when processing aninternational application are presented in these Guidelines in an order which, in general,corresponds to the chronological sequence in which these tasks are performed. However, sometasks, such as, for example, those relating to the appointment of an agent or the renunciation orrevocation of such an appointment, may arise at any time during the international phase; othertasks may, in practice and depending on the case, be more easily carried out concurrently or in asequence different from that in which they are dealt with in these Guidelines.

11. Formal requirements and corrections of defects are sometimes referred to in separatechapters Chapters or parts thereof, taking into account the fact that there is not always a singleor obligatory way of correcting a given defect. In certain cases, the receiving Office may use itsdiscretion and, where appropriate, contact the applicant, before deciding on how to proceed, forexample, whether to correct a defect ex officio or to invite the applicant to correct that defect.

12. Annex A to these Guidelines contains an example of a table for the transfer of fees to theInternational Bureau.

13. Annex B to these Guidelines contains examples of typical errors made by applicants ininternational applications together with an indication of how such defects should be corrected.

CHAPTER IIGENERAL

Marking of the Sheets of the International Application, Documents and CorrespondenceRelating Thereto

14. When marking the sheets of the international application or any document orcorrespondence relating thereto, the receiving Office should use black ink so that the markingsare fit for reproduction by photocopying, scanning, etc. The marking of the date by a perforationstamp is not sufficient.

Use of Facsimile Machine, Teleprinter, Telegraph and Other Like Means ofCommunication; Date of Receipt

15. A document making up the international application, and any later document orcorrespondence relating thereto, may, if the receiving Office so permits, be transmitted, to theextent feasible, by facsimile machine, telegraph, teleprinter, or other like means ofcommunication resulting in the filing of a printed or written document (Rule 92.4). Note that thereceiving Office may, on a case-by-case basis, accept to receive any document transmitted byany of those means even if it has notified the International Bureau that it is not prepared to do soin general.

16. Upon receipt of sheets transmitted by any of the means referred to above, the receivingOffice checks whether the document received is legible and appears to be complete. Where partor all of the received document is illegible or part of the document is not received, the document



is treated as not having been received to the extent that the received document is illegible or thatthe attempted transmission failed (Rule 92.4(c)). Where part or all of the received document isillegible or part of the document appears not to have been received, the receiving Officepromptly notifies (Form PCT/RO/140) the applicant accordingly.

17. The receiving Office applies its usual national practice to determine the date of receipt ofany document (other than a document making up the international application) transmitted byany of the means referred to above if a part of a document was received before, and another partafter, midnight, and the transmission therefore spans two calendar days. With regard to adocument making up the international application, see Rule 20.2 and paragraphs 193 to 207.

18. Where the receiving Office requires, under Rule 92.4(d), or considers it necessary, underRule 92.4(f), that the original of any document transmitted by any of the means referred toabove be furnished, it proceeds as provided for in Rule 92.4(d) to (g). For further details, seeparagraphs 37 and 38.

Handling of Requests Prepared Using the PCT-EASY Software

18A. The procedure for the processing by the receiving Office of requests in PCT-EASYformat, including entering appropriate indications (international application number,international filing date, etc.) is contained in Chapter 13 (Receiving Office Functions) of thePCT-EASY User Reference Manual (a publication of WIPO); see also paragraphs 165A to165M.

Computation of Time Limits

19. For the computation of periods expressed in years, months or days, see Rules 80.1 to 80.3.For the computation of any period expiring on a non-working day or official holiday, seeRule 80.5. For the determination of the starting date of the computation of any period and thedate on which any period expires, see Rules 80.4 and 80.7. For the computation of any periodin the case of delay in the mailing or the receipt by the applicant, see Rule 80.6. For the(re)computation of any time limit where the priority date has changed, see Rules 26bis.1(c)and 90bis.3(d) and paragraphs 192 and 321.

Documents and Correspondence

20. Documents and Correspondence Submitted by the Applicant. Any paper submitted by theapplicant in the course of the PCT procedure, other than the international application itself,must, if not itself in the form of a letter, be accompanied by a letter identifying the internationalapplication to which it relates; the letter must be signed by the applicant (Rule 92.1(a)). If thoserequirements are not complied with, the receiving Office informs the applicant as to thenon-compliance and invites (Form PCT/RO/131) the applicant to remedy the omission within atime limit fixed in the invitation. The time limit so fixed must be reasonable in thecircumstances; even where the time limit so fixed expires later than the time limit applying tothe furnishing of the paper (or even if the latter time limit has already expired), it shall be notless than 10 days and not more than one month from the date of mailing of the invitation. If theomission is remedied within the time limit fixed in the invitation, the omission shall bedisregarded; otherwise, the applicant shall be informed (Form PCT/RO/149) that the paper hasbeen disregarded (Rule 92.1(b)). Where non-compliance with those requirements has beenoverlooked and the paper taken into account for the international procedure, the non-complianceis to be disregarded (Rule 92.1(c)).



21. The language of any letter from the applicant to the receiving Office shall be the same asthe language of the international application to which such letter relates, provided that, wherethe international application is to be published in the language of a translation required underRule 12.3(a) or 12.4(a), any letter shall be in such language (paragraphs 67, 67A and 68).However, the receiving Office may expressly authorize the use of any other language(Section 104(a)). It may also accept any language on a case-by-case basis.

22. Documents and/or correspondence from the applicant which are to be transmitted to theInternational Bureau and/or the International Searching Authority shall be transmitted by thereceiving Office together with the record copy and/or the search copy, respectively, where thosecopies have not yet been transmitted to that Bureau or Authority (paragraph 285). Otherwise,later documents and/or ,correspondence should be transmitted promptly. Form PCT/RO/118 isused for transmitting the record copy, the search copy and any other document andcorrespondence relating thereto. For transmittal of the record copy and search copy, seeparagraphs 285 to 293.

23. Correspondence Intended for the Applicant. Where the applicant has appointed an agentor agents under Rule 90.1(a), correspondence intended for the applicant is addressed to theapplicant’s agent or, in the case of two or more agents, to the “first mentioned agent” underSection 108(a) or (b). Where there are two or more applicants and a common agent (that is, anagent appointed by all applicants) has been appointed, correspondence is addressed to thatcommon agent. Where the applicants have not appointed a common agent but have appointed,under Rule 90.2(a), a common representative (that is, one of the applicants appointed torepresent all of them and who is entitled to file an international application in accordance withArticle 9), correspondence is addressed to that common representative (Section 108(c)). If anappointed common representative has appointed an agent, correspondence is sent to that agent(Section 108(c)(i)). Where a sub-agent has been appointed (Rule 90.1(d)(i)), correspondenceintended for the applicant will continue to be sent to the first mentioned agent referred to above;such correspondence will be sent to the sub-agent only if the agent who has appointed thesub-agent specifically requests that correspondence be sent to the sub-agent. In case of doubt,the receiving Office should clarify with the applicant to whom correspondence should be sent.Correspondence intended for the applicant must indicate the applicant’s file reference, if any(Section 109 and paragraph 76).

24. Where there are two or more applicants and no common agent or common representativehas been appointed, correspondence intended for the applicant is addressed to the “deemed”common representative, that is, the applicant first named in the request who is entitled, inaccordance with Rule 19.1, to file an international application with the receiving Office(Rule 90.2(b)). If that “deemed” common representative has appointed an agent, correspondenceintended for the applicant is addressed to that agent.

25. Where a special address for correspondence is indicated under Rule 4.4(d) in Box No. IVof the request, correspondence is sent to that address (paragraphs 81 and 118).

26. Where an international application indicates two or more applicants, it shall be sufficient,for the purpose of identifying that application, to indicate, in any form or correspondencerelating to such application, the name of the applicant first named in the request (Section 105).

27. Mailings by Receiving Offices. Any document or letter emanating from or transmitted bythe receiving Office constituting an event from the date of which any time limit under the Treatyand the Regulations commences to run is to be sent by airmail, provided that surface mail maybe used instead of airmail in cases where surface mail normally arrives at its destination within



two days from mailing or where airmail service is not available (Rule 92.3). In cases where theapplicant’s attention should be drawn urgently to a notification or other communication, thereceiving Office should, to the extent possible, transmit such notification or othercommunication by facsimile and send a confirmation copy by mail.

Irregularities in the Mail Service

28. Delay or Loss in the Mail of a Document Letter or Letter Document Sent by theApplicant. Delay or loss in the mail shall be excused when it is proven to the satisfaction of thereceiving Office that the letter or document or letter concerned was mailed at least five daysbefore the expiration of the time limit, provided that the mailing was by registered airmail or,where surface mail would normally arrive at the destination concerned within two days ofmailing, by registered surface mail. Evidence of the mailing and, where the document or letterwas lost, the substitute document or letter as well as the evidence concerning its identity withthe document or letter lost, shall be submitted within one month after the date on which theinterested party noticed – or with due diligence should have noticed – the delay or the loss, andin no case later than six months after the expiration of the time limit applicable in the given case(Rule 82.1(a) to (c)).

29. Use of Delivery Services. Any receiving Office may accept the use of delivery servicesother than postal authorities and apply the provisions of Rule 82.1(a) to (c) as if the deliveryservice was a postal authority, provided the details of the mailing were recorded by the deliveryservice at the time of mailing. If the receiving Office has notified the International Bureau underRule 82.1(d) that it accepts the use of delivery services other than postal authorities, it mustproceed as outlined in that Rule. The receiving Office may, on a case-by-case basis, accept theuse of delivery services even if it has notified the International Bureau that it is not prepared todo so in general.

30. Interruption in the Mail Service. The provisions of Rule 82.1(c) apply mutatis mutandisfor interruptions in the mail service caused by war, revolution, civil disorder, strike, naturalcalamity or other like reasons in the locality where the interested party resides or has his placeof business or is staying (Rule 82.2).

Forms

31. Forms relating to the receiving Office are contained in Part I of Annex A to theAdministrative Instructions. The request form (Form PCT/RO/101) is available in Part V ofAnnex A to the Administrative Instructions. Among those forms for use by the receiving Office,those whose use is mandatory are listed in Section 102(a)(ii). The language of the forms used bythe receiving Office must, in general, be the same as the language in which the internationalapplication is filed. However, where the international application is to be published in thelanguage of a translation required under Rule 12.3(a) or 12.4(a), the receiving Office shall usethe forms in such language, and it may, in its communications to the applicant, use the forms inany other language being one of its official languages (Section 103).

CHAPTER IIINATIONAL SECURITY CLEARANCE

32. The receiving Office, where required by the national law, reviews the internationalapplication for national security matters (Rule 22.1(a)). Subject to the prescriptions of the



national law, international processing may continue. National security clearance should, subjectto paragraph 33, be given not later than at the time when the transmittal of the record copy isdue under Rule 22.1(a), that is, early enough for the record copy to reach the InternationalBureau before the expiration of the 13th month from the priority date.

33. If clearance is refused or has, by the end of the 13th month from the priority date, not beenobtained and is not expected to be obtained, the receiving Office notifies (Form PCT/RO/147)the applicant and the International Bureau that the record copy and the search copy will not betransmitted and that the international application will not be treated as such. If national securityclearance is expected to be obtained soon, the receiving Office may postpone its decision to nolonger treat the international application as such but must make the said decision and send theinvitation before the expiration of 17 months from the priority date if no clearance has beenreceived by that time (Section 330 and paragraphs 285 to 287).

34. For refund of fees where any prescriptions concerning national security prevent transmittalof the record copy and search copy, see Rules 15.6(iii) and 16.2(iii) and paragraphs 268 to 271.

CHAPTER IVARTICLE 11(1) CHECK;

REQUIREMENTS FOR INTERNATIONAL FILING DATE

Receipt of Purported International Application

35. Marking. Upon receipt of papers purporting to be an international application, thereceiving Office indelibly marks the date of actual receipt in the space provided on the last sheetof the request. It then assigns the international application number according to Section 307 andmarks that number in the space provided on the first sheet of the request and in the upper right-hand corner of each sheet of the purported international application (Rule 20.1(a) andSection 308). Where the request form was not used by the applicant, the receiving Officeproceeds as outlined in paragraph 75A. The receiving Office marks the date of receipt also onthe fee calculation sheet, in the space provided for that purpose, if such sheet has beensubmitted.

36. The receiving Office may notify the applicant (Form PCT/RO/125 may be used for thispurpose) of the receipt of the purported international application (Section 301). Suchnotification, which is not to be confused with the notification of the international applicationnumber and the international filing date (paragraph 44), is not mandatory but should correspondto the practice of the receiving Office with respect to national applications filed with it. If,according to its national practice, an Office notifies the applicant, before according a filing date,of the receipt of a national application, then it should, in its capacity as a receiving Office, dothe same for international applications.

37. Confirmation Copy of Facsimile Transmission. Where a receiving Office which acceptsthe filing of international applications by facsimile machine receives by means other thanfacsimile machine a purported international application, it checks, before it marks the date ofreceipt and assigns an international application number, whether it is the first receipt of a newpurported international application or whether that purported international application wasalready received by facsimile transmission. In the latter case, the receiving Office marks suchoriginal with the words “CONFIRMATION COPY” or their equivalent in the language ofpublication of the international application at the bottom of the first page of the request and of



the first page of the description. Where only certain sheets are received by facsimile and theapplicant subsequently files the original of those sheets only, the words “CONFIRMATIONCOPY” should be marked on each original sheet so received.

38. The international application as received by facsimile transmission constitutes the recordcopy. Therefore, the date of receipt to be marked on the last page of the request of theconfirmation copy is the date on which the facsimile transmission was received (Section 331).Whether the sheets of the confirmation copy of the facsimile transmission should be marked assubstitute sheets in accordance with Section 325 depends on whether the sheets of the facsimilecontain any defects with regard to physical requirements (Rule 92.4(e) and paragraphs 208to 210).

Requirements for According an International Filing Date (Article 11(1))

39. The receiving Office checks whether, at the time of receipt of the purported internationalapplication, the requirements for according an international filing date are fulfilled(Article 11(1)), as outlined in the following paragraphs.

40. Right to File. The receiving Office checks whether the applicant does not obviously lack,for reasons of residence and nationality, the right to file an international application with thereceiving Office. If there are two or more applicants, it is sufficient that the Office with whichthe international application is filed is the receiving Office of or acting for a Contracting State ofwhich at least one of them is a resident or national (Rules 18 and 19). See paragraphs 82 to 87as to how questions of residence and nationality are determined. Where an internationalapplication is filed with a national Office, which acts as a receiving Office under the Treaty, byan applicant who is a resident or national of a Contracting State but that Office is not competent,for reasons of nationality or residence of the applicant, to receive that international application,Rule 19.4(a)(i) applies (paragraphs 274 to 277).

41. Language. The receiving Office checks whether the international application is in theprescribed language. For the purposes of according an international filing date, it is sufficientthat the description, other than any sequence listing part thereof, and the claims are in thelanguage, or one of the languages, which the receiving Office, under Rule 12.1(a), accepts forthe filing of international applications.1 With regard to the language of the request, seeparagraph 59. With regard to the language of the abstract and of any text matter of the drawings,see paragraph 62. With regard to any sequence listing part of the application, see paragraph 68.Where an international application is filed with a national Office, which acts as a receivingOffice under the Treaty, by an applicant who is a resident or national of a Contracting State andthe international application is not in a language accepted by that national Office but is in alanguage accepted by the International Bureau as receiving Office, Rule 19.4(a)(ii) applies(paragraphs 274 to 277).

42. Other Minimum Requirements. The receiving Office checks whether the purportedinternational application contains at least the following elements:

(i) an indication that it is intended to be an international application (this indicationis included on the printed request form); 1 If the international application is filed with the United States Patent and Trademark Office as a

receiving Office, all elements of the international application other than any sequence listing partof the description (that is, request, description other than any sequence listing part thereof, claims,abstract, any text matter of the drawings) must be in English (see Rule 20.4(c) and (d)).



(ii) the designation under Rule 4.9(a) of at least one Contracting State;

(iii) the name of the applicant; for according an international filing date, it issufficient if the name is indicated in a way which allows the applicant’s identity to beestablished even if the name is misspelled, the given names are not fully indicated or, in case oflegal entities, the indication of the name is abbreviated or incomplete (Rule 20.4(b));

(iviii) a part that appears to be a description;

(iv) a part that appears to be a claim or claims.

Positive Determination (Requirements of Article 11(1) Fulfilled)

43. According of International Filing Date. If all the requirements of Article 11(1) arefulfilled, the receiving Office makes a positive determination under that Article and accords aninternational filing date unless the international application must be transmitted to theInternational Bureau as receiving Office under Rule 19.4 (paragraphs 274 to 277). It marks thatinternational filing date, which corresponds to the date of actual receipt of the internationalapplication, the name of the receiving Office and the words “PCT International Application” or“Demande internationale PCT” on the first sheet of the request; if the official language of thereceiving Office is neither English nor French, the words “International Application” or“Demande internationale” may be accompanied by a translation of those words into (one of) theofficial language(s) of the receiving Office (Rule 20.5(a)).

44. Notification of Applicant. The receiving Office notifies (Form PCT/RO/105) the applicantof the international application number and the international filing date promptly after they havebeen accorded; it sends to the International Bureau a copy of the notification sent to theapplicant, except where the record copy is being sent at the same time (paragraphs 285 to 287).If the priority of an earlier application (or of several earlier applications) is claimed, the(earliest) priority date claimed must be indicated on the copy of the notification which is sent tothe International Bureau (Section 324). Even where the national security clearance referred to inparagraphs 32 to 34 has not been given by that time (Form PCT/RO/105 contains a check-boxfor this purpose), the copy of Form PCT/RO/105 must be sent to the International Bureau whichis then, and only then, in a position to monitor the receipt of the record copy and proceed asprovided under Rule 22.1(b) and (c).

Negative Determination (Requirements of Article 11(1) Not Fulfilled)

45. Invitation to Correct. If the receiving Office finds that the international application lackscompliance with any requirement of Article 11(1), it invites (Form PCT/RO/103) the applicantto submit the required correction(s) (Rule 20.6(a)).

46. Time Limit. The receiving Office fixes a time limit, reasonable under the circumstances,for filing the correction and promptly mails the invitation to the applicant. The time limit shallnot be less than 10 days, and shall not exceed one month, from the date of the invitation. If suchtime limit expires after the expiration of one year from the filing date of any (earlier) applicationwhose priority is claimed, the receiving Office may call this circumstance to the attention of theapplicant (Rule 20.6(b)); Form PCT/RO/103 contains a check-box for that purpose. This timelimit is not extendible.

47. The receiving Office checks whether the applicant has timely responded to the invitation(Rule 20.2(a)(ii)) and whether corrections submitted are sufficient to fulfill the requirements ofArticle 11(1).



48. Positive Determination. If the receiving Office finds that the applicant has timelyresponded and the corrections submitted satisfy the requirements, it marks the date on which thecorrections were received as the “date Date of timely receipt of the required corrections underPCT Article 11(2):” (item 4 in the Box titled “For receiving Office use only”) on the last sheetof the request and marks that date on the first sheet of the request as the international filing date,still leaving legible the earlier date, if such date had already been marked (Rule 20.3). Wherethe priority of an earlier application is claimed and, as a result of a positive determination, theinternational filing date is after the expiration of one year from the (earliest) priority date, thereceiving Office proceeds as outlined in paragraphs 167 to 172. For the procedure applicable inthe case of later submitted sheets, see paragraphs 200 to 207.

49. Where, on the basis of the indications given in the request concerning nationality andresidence of the applicant(s), no applicant has the right to file an international application andthe receiving Office has issued an invitation to correct a defect under Article 11(1)(a)(i) andevidence is submitted indicating to the satisfaction of the receiving Office that, in fact, theapplicant had, on the date on which the international application was actually received, the rightto file an international application with that receiving Office, the following applies: theinvitation is considered to be an invitation to correct a defect under Article 14(1)(a)(ii) andRule 4.5 in the prescribed indications concerning the applicant’s residence and/or nationality,and the applicant may correct those indications accordingly (Section 329). If such correction ismade, no defect is considered to exist under Article 11(1)(a)(i).2 If the receiving Office is notcompetent to receive the international application because of the nationality and/or residence ofthe applicant(s), the receiving Office transmits the application to the International Bureau asreceiving Office under Rule 19.4(a)(i) as outlined in paragraphs 274 to 277.

50. Negative Determination. If the receiving Office finds that the corrections of defects underArticle 11(1) have not been received or have not been timely received, or that the correctionstimely received are not sufficient, and that compliance with the requirements for an internationalfiling date under Article 11(1) is still lacking, it proceeds as follows:

(i) it deletes the letters “PCT” from the indication of the international applicationnumber on any papers marked previously with that number, and uses the said number withoutsuch letters in any future correspondence relating to the purported international application(Section 307(b));

(ii) it notifies (Form PCT/RO/104) the applicant that the application will not betreated as an international application and that the number marked on the papers will no longerbe used as an international application number (Rule 20.7(i) and (ii)); it sends a copy of thatnotification to the International Bureau;

(iii) it abstains from transmitting the record copy and the search copy but keeps theapplication and any correspondence relating thereto (Rule 20.7(iii)); it sends a copy of the saidpapers to the International Bureau only upon special request in case of a review underArticle 25(1) (Rule 20.7(iv)); and

(iv) it refunds (Form PCT/RO/119) any international filing fee and/or search feesreceived, (Rules 15.6(i) and 16.2(i)); it may also refund any transmittal fee received, subject tothe provisions applied by the receiving Office; for the procedure for refunding fees, seeparagraphs 268 to 271.

2 The United States Patent and Trademark Office as a receiving Office has informed the

International Bureau that it does not follow the procedure set out in this paragraph andSection 329.



51. Error by the Receiving Office. If the receiving Office discovers or, on the basis of theapplicant’s reply, realizes that it should not have issued an invitation to correct since therequirements under Article 11(1) were fulfilled when the papers were received, it proceeds asoutlined in paragraphs 43 and 44 (Rule 20.8).

Later Finding of Non-Compliance with Requirements of Article 11(1)

52. If, within four months from the international filing date, the receiving Office finds that anyof the requirements listed in Article 11(1)(a)(i) to (iii) was not complied with on that date, itproceeds in accordance with Article 14(4) and Rules 29.4 and 30. However, the receiving Officedoes not apply that procedure if the requirements for transmittal of a purported internationalapplication to the International Bureau as receiving Office under Rule 19.4(a)(i) or (ii) arefulfilled, in which case it transmits the international application to the International Bureau asreceiving Office (paragraphs 274 to 276).

53. Where the receiving Office intends to declare the international application withdrawnunder Article 14(4), it notifies (Form PCT/RO/115) the applicant of its intention and the reasonstherefor. At the same time, it invites the applicant to submit arguments within one month fromthe notification (see Rule 29.4). If, following such notification, the receiving Office decides, forexample, after having considered the arguments presented by the applicant, not to issue such adeclaration, it notifies (Form PCT/RO/127) the applicant as provided for in Section 312.

54. If, despite the applicant’s arguments, the receiving Office declares the internationalapplication withdrawn under Article 14(4), it proceeds in compliance with Rule 29.1(a). Adeclaration under Article 14(4) may only be issued within four months from the internationalfiling date (Rule 30.1). Form PCT/RO/143 is used to notify the applicant. The notification mustindicate the reasons for such declaration.

CHAPTER VLANGUAGE CHECK

(ARTICLE 3(4)(i); RULES 12.1, 12.3, 12.4 AND 26.3ter)

General

55. Pursuant to Article 3(4)(i), the international application (that is, all elements of theinternational application: request, description (other than any sequence listing part thereof),claims, abstract, any text matter of the drawings) must be in “a prescribed language.” Thisrequirement means that description (other than any sequence listing part thereof), claims,abstract and any text matter of the drawings must be in the language, or one of the languages,which the receiving Office, pursuant to Rule 12.1(a), accepts for the filing of internationalapplications, and that the request must be in any language of publication which is both acceptedby the receiving Office accepts for the filing of requests and a language of publication(Rule 12.1(c)). The languages of publication for international applications are Chinese, English,French, German, Japanese, Russian and Spanish (Rule 48.3(a)).

56. With regard to the description (other than any sequence listing part thereof) and claims,compliance with the requirement that the international application be in a prescribed language isa condition for according an international filing date (Article 11(1) and Rule 20.4(c)). If thedescription and/or the claims, or any part thereof (except any sequence listing part of thedescription, see paragraphs 68 and 222), are not in such a language, the receiving Office must,



subject to any required national security clearance and payment of any required fee, transmit theinternational application to the International Bureau as receiving Office (paragraphs 274to 282).

57. With regard to the abstract, any text matter of the drawings and the request, compliancewith requirements as to language is not a condition for according an international filing date. Ifthe abstract or any text matter of the drawings does not comply with Article 3(4)(i) andRule 12.3(a), that is, if those elements of the international application are not in the samelanguage as the description and claims, the receiving Office proceeds as provided inRule 26.3ter(a) (paragraph 63). If the request does not comply with Article 3(4)(i) andRule 12.1(c), the receiving Office proceeds as provided for in Rule 26.3ter(c) (paragraph 60).3

58. Under Rule 12.1(a), receiving Offices may accept for the filing of internationalapplications languages which are not accepted by the competent International SearchingAuthority(ies) for the purposes of international search. Where the applicant files an internationalapplication in a language not accepted by the competent International Searching Authoritychosen in respect of that application, the applicant is required to furnish a translation for thepurposes of international search as outlined in paragraph 69. The provisions relating to thelanguage of the international application operate in such a way that either the internationalapplication in its original language or any required translation is sufficient for each stage of theprocedure during Chapter I of the international phase (for the processing of the internationalapplication by the receiving Office, for the carrying out of the international search andestablishment of the written opinion by the International Searching Authority and for theinternational publication) (Rules 12.1(b), 12.3(a) and 48.3(b)12.4(a)); where the internationalapplication must be translated, only one translation is required for all the above-mentionedstages.

Language of Request

59. Requirements. With regard to the request, the receiving Office checks, within the timelimit under Rule 26.1(a) (Rule 26.3ter(c)), whether the request (including any declarationcontained in the request under Rule 4.17) complies with Rule 12.1(c), that is, whether it is filedin a language of publication which is both a language accepted by the receiving Office acceptsfor the filing of the requestunder Rule 12.1(a) and a language of publication under Rule 48.3(a).

60. Correction of Defects. Where the request does not comply with Rule 12.1(c), the receivingOffice invites (Form PCT/RO/106) the applicant to furnish, within the time limit referred to inRule 26.2 (Rule 26.3ter(c)), the request (including any declaration contained in the requestunder Rule 4.17) in any language of publication which is it both a language accepted acceptsbyit for the filing of the request. under Rule 12.1(a) and a language of publication underRule 48.3(a). Where the applicant has the choice between two or more languages, the receivingOffice should send to the applicant, together with the invitation, copies of the request form inthose languages. A copy of that invitation is sent to the International Bureau.4 With regard to

3 If the international application is filed with the United States Patent and Trademark Office as a

receiving Office, all elements of the international application other than any sequence listing partof the description (that is, request, description other than any sequence listing part thereof, claims,abstract, any text matter of the drawings) must be in English (see Rule 20.4(c) and (d)).

4 With regard to international applications filed with the United States Patent and Trademark Officeas receiving Office, see paragraph 57 and the accompanying footnote.



international applications filed with the United States Patent and Trademark Office as receivingOffice, see paragraph 57 and the accompanying footnote.

61. Failure to Correct. Where the receiving Office has sent to the applicant an invitation underRule 26.3ter(c) and the applicant has not, within the applicable time limit, furnished therequired correction, it proceeds as provided in Rule 26.5 and, if its determination is negative,declares (Form PCT/RO/117) the international application to be considered withdrawn, inwhich case Rule 29.1 applies mutatis mutandis. For the procedure applicable in such case, seeparagraph 159.

Language of Abstract and Text Matter of the Drawings

62. Requirements. With regard to the abstract and any text matter of the drawings, thereceiving Office checks, within the time limit under Rule 26.1(a) (Rule 26.3ter(a)), whetherthese elements are filed in the same language as the description and claims.

63. Correction of Defects. Where the language in which the abstract and/or any text matter ofthe drawings, or any part thereof, is filed is different from the language of the description andclaims, the receiving Office invites (Form PCT/RO/106) the applicant to furnish, within thetime limit referred to in Rule 26.2 (Rule 26.3ter(a)), a translation of the abstract and/or any textmatter of the drawings into the language in which the international application is to be publishedunder Rule 48.3(a) or (b), unless:

(i) a translation of the (entire) international application is required underRule 12.3(a) or 12.4(a) (paragraphs 67 or 67A), or

(ii) the abstract and any text matter of the drawings are (already) in the language inwhich the international application is to be published.

64. In the invitation, the receiving Office indicates the language into which the abstract and/orany text matter of the drawings is to be translated so as to comply with the requirements ofRule 26.3ter(a). Rules 26.3 and 26.3bis concerning physical requirements (paragraphs 132to 146) apply mutatis mutandis to any translation furnished by the applicant underRule 26.3ter(a).

65. Failure to Correct. Where the receiving Office has sent to the applicant an invitation underRule 26.3ter and the applicant has not, within the applicable time limit, furnished the requiredtranslation, it proceeds as provided for in Rules 26.5 and 29.1, which apply mutatis mutandis(Rule 26.3ter(a)). For the procedure applicable in such case, see paragraph 159.

Language(s) Accepted for the Purposes of International Search and InternationalPublication

66. Requirements of the Competent International Searching Authority as to the Language ofthe International Application. The receiving Office checks whether the internationalapplication is filed in a language which is accepted by the International Searching Authority thatis to carry out the international search (PCT Applicant’s Guide, Volume I/B, Annex D, and, forupdated information between the issuance of updates of the PCT Applicant’s Guide, seeSection IV of the PCT Gazette and the PCT Newsletter). Where more than one InternationalSearching Authority is competent, the applicant must indicate a choice of InternationalSearching Authority (paragraph 114).



67. Language Not Accepted for the Purposes of International Search. Where thelanguage in which the international application is filed is not accepted by the competentInternational Searching Authority chosen by the applicant, the applicant must furnish to thereceiving Office, within one month from the date of receipt of the international application bythat Office, a translation of the international application into a language which is all of thefollowing:

(i) a language accepted by that Authority, and

(ii) a language of publication, and

(iii) a language accepted by the receiving Office under Rule 12.1(a), unless theinternational application was already filed in a language of publication.

67A. Language Not Accepted for the Purposes of International Publication. Where thelanguage in which the international application is filed is not a language of publication and notranslation is required under Rule 12.3(a), the applicant must furnish to the receiving Office,within 14 months from the priority date, a translation of the international application into anylanguage of publication which the receiving Office accepts for the purposes of internationalpublication.

68. The requirements relating to the translation for the purposes of international search and ofinternational publication do not apply to the request (paragraphs 59 to 61) or any sequencelisting part of the description (Rules 12.3(b) and 12.4(b) and paragraph 222).

69. Invitation to Furnish Translation and Late Furnishing Feefor the Purposes ofInternational Search and Late Furnishing Fee. Where the language in which the internationalapplication is filed is not accepted by the competent International Searching Authority and theapplicant has not, by the time the receiving Office sends to the applicant the notification underRule 20.5(c), furnished the translation required under Rule 12.3(a) (paragraph 67), the receivingOffice invites the applicant (Form PCT/RO/150, a copy of which is sent to the InternationalBureau), preferably together with the notification under Rule 20.5(c) (that is,Form PCT/RO/105):

(i) to furnish to the receiving Office the required translation within the time limitunder Rule 12.3(a), that is, within one month from the date of receipt of the internationalapplication by the receiving Office; in the invitation, the receiving Office indicates thelanguage, or the languages, into which the international application may be translated so as tocomply with the requirements under Rule 12.3(a);

(ii) in the event that the required translation is not furnished within the one-monthtime limit referred to under item (i), to furnish that translation and pay, where applicable, thelate furnishing fee referred to in Rule 12.3(e), within one month from the date of the invitationor two months from the date of receipt of the international application by the receiving Office,whichever expires later (Rule 12.3(c)).

69A. Invitation to Furnish Translation for the Purposes of International Publication andLate Furnishing Fee. Where the language in which the international application is filed is not alanguage of publication and no translation is required under Rule 12.3(a), and the applicant hasnot furnished the translation required under Rule 12.4(a) within the time limit of 14 monthsfrom the priority date (paragraph 67A), the receiving Office invites the applicant(Form PCT/RO/157, a copy of which is sent to the International Bureau)

(i) to furnish the required translation,

(ii) to pay, where applicable, the late furnishing fee referred to in Rule 12.4(e),



within 16 months from the priority date (Rule 12.4(c)). In the invitation, the receiving Officeindicates the language, or the languages, into which the international application may betranslated so as to comply with the requirements under Rule 12.4(a).

70. Checking of Translation. Where the receiving Office has received a translation for thepurposes of international search or international publication, it indelibly marks, in the upperright-hand corner of each sheet of that translation, the international application number(Section 308) and, immediately below, the date of receipt. If the receiving Office notices, beforethe expiration of the applicable time limit (paragraphs 69 and 69A), what appears to be asignificant inconsistency between the original text and the translation, for example, whencomparing the number of pages, the number of claims, the titles, etc., it should draw theapplicant’s attention to that inconsistency and give the applicant an opportunity to make anynecessary corrections within the applicable time limit (paragraphs 69 and 69A). Within theapplicable time limit, the applicant is entitled to furnish a corrected version of the translationthat should be stamped as provided for in Section 305bis(c) and 308. In case where thereceiving Office has already sent the initial version of the translation to the InternationalBureau, the receiving Office should draw the attention of the International Bureau to the factthat these sheets should replace the previously transmitted version of the translation. Forcompliance with the requirements for satisfactory reproduction and/or reasonably uniformpublication, see paragraphs 132 to 138.

71. Failure to Furnish the Required Translation. Where the receiving Office has sent to theapplicant an invitation under Rule 12.3(c) or 12.4(c) and the applicant has not, within theapplicable time limit under Rule 12.3(c)(ii) or 12.4(c), furnished the required translation, or thetranslation furnished does not comply with the above-mentioned requirements, or any requiredlate furnishing fee has not been paid, the receiving Office declares (Form PCT/RO/117) theinternational application withdrawn, provided that any translation and any payment receivedbefore that declaration is made and before the expiration of 15 months (Rule 12.3(d)) or 17months (Rule 12.4(d)), from the priority date are considered to have been received before theexpiration of that the applicable time limit (Rules 12.3(d) or 12.4(d)). A copy of that notificationis sent to the International Bureau and to the International Searching Authority if the recordcopy and the search copy, respectively, have been transmitted.

CHAPTER VIARTICLE 14 CHECK AND

OTHER FORMAL REQUIREMENTS

GENERAL

72. Article 14(1)(a) sets out a number of formal defects for which the receiving Office checksthe international application (signature, indications concerning the applicant, title, abstract andphysical requirements). Article 14(1)(b) provides that if the receiving Office finds any of thosedefects, it invites (Form PCT/RO/106) the applicant to correct them within the prescribed timelimit, failing which the receiving Office declares the international application withdrawn. Therelevant provisions relating to checking by, and correcting before, the receiving Office of theabove-mentioned elements of the international application, including time limit for correction,are contained in Rule 26.

73. Some of the requirements referred to in Article 14(1)(a) are set out in Rule 4, whichprovides for certain indications to be made and, at the applicant’s option, for certain declarations



to be included, in the request. Rule 4 contains further requirements which are not covered byArticle 14(1)(a). Regarding those indications and declarations which are not covered byArticle 14(1)(a)—for example, indications concerning the inventor (Rule 4.6), indicationsconcerning an earlier search (Rule 4.11) or declarations relating to national requirements(Rule 4.17)—Article 14(1)(b) and Rule 26 do not apply, that is, compliance with thoserequirements cannot be enforced and processing of the international application may continueduring the international phase even if those requirements are not complied with.

74. For details concerning the invitation procedure under Rule 26 and correction of otherdefects, including ex officio corrections, see paragraphs 153 to 165.

FORMAL REQUIREMENTS

Form of the Request

75. The receiving Office checks whether the request is:

(a) made on Form PCT/RO/101;

(b) presented as a computer print-out, the layout and contents of which correspond to theformat of Form PCT/RO/101 (Rule 3.1 and Section 102(h));

(c) presented as a computer print-out which appears to be in PCT-EASY format (Rule 3.1and Section 102bis(a)) accompanied by a PCT-EASY diskette (Section 102bis(a)); or

(d) presented in any other format permitted for the presentation of the request as acomputer print-out, as may be determined by the Director General; any such format having beenpublished in the PCT Gazette (Section 102(i)).

75A. Where the request is presented as a computer print-out corresponding to the format ofForm PCT/RO/101, the receiving Office checks whether that print-out complies withSection 102(h). Where the request is presented as a computer print-out that appears to be inPCT-EASY format, and/or is accompanied by a PCT-EASY diskette, the receiving Officeproceeds as outlined in paragraphs 165A to 165M. If neither Form PCT/RO/101 nor a computerprint-out complying with the requirements under Section 102(h) is used, the receiving Officedraws the applicant’s attention to that fact and invites (Form PCT/RO/106) the applicant to fillin a copy (sent together with the invitation) of Form PCT/RO/101 and to return the duly filled-in copy to it within a time limit fixed in the invitation. The filled-in request form may notcontain differences in relation to the request filed on the international filing date (for example,regarding the designation of States or the statement concerning precautionary designations(paragraphs 100 to 106)). Where certain indications concerning the applicant (paragraphs 78to 87A and 91 to 99), the inventor (paragraphs 88 to 99), the agent or the commonrepresentative (paragraphs 117 to 121) do not correspond to indications made on the date onwhich the international application was filed, the procedure outlined in paragraphs 309 to 312applies. Where two or more languages are accepted by the receiving Office for the filing ofinternational applications, see paragraph 60. All indications which may be contained in therequest are dealt with in the following paragraphs except for those relating to claiming priorityand declarations relating to national requirements which are dealt with separately, inChapters VII and VIIbis, respectively.



75B. The following paragraphs 76 to 131 relate to Form PCT/RO/101 and to computerprint-outs corresponding to that Form. As regards requests prepared using the PCT-EASYsoftware, see paragraphs 165A to 165M.

Applicant’s File Reference

76. Where the applicant has indicated a file reference in the request, that reference shall notexceed 12 characters in length (Rule 11.6(f) and Section 109), so that it can be satisfactorilyhandled in computerized administration systems. If that file reference exceeds 12 characters,and subject to the following sentence, the receiving Office may either truncate that reference exofficio to 12 characters and notify the applicant (Form PCT/RO/146; see also paragraph 165) orinvite (Form PCT/RO/106) the applicant to amend that reference, so that it conforms toSection 109. The receiving Office may nevertheless, if it so wishes, leave such file referencewithout truncating it or inviting the applicant to amend it. For corrections, see paragraphs 153to 165 and Annex B.

Title of the Invention

77. The international application must contain a title (Article 14(1)(a)(iii)). The title of theinvention must be indicated twice, in Box No. I of the request and at the beginning of the firstpage of the description (Rules 4.1(a)(ii) and 5.1(a)). Both indications must be identical. Wherethe international application does not contain a title, the receiving Office invites(Form PCT/RO/106) the applicant to correct that defect under Rule 26 and sends a copy of theinvitation to the International Bureau and also to the International Searching Authority(Rules 26.1(b) and 37). If the title appears in the request but not on the first page of thedescription, or vice versa, or the title as indicated on one of those pages contains a spellingmistake, the receiving Office may correct that defect ex officio (paragraphs 161 to 165). In allthe other cases, the receiving Office invites (Form PCT/RO/106) the applicant to correct the title(paragraphs 153 to 155). It is not the responsibility of the receiving Office to check complianceof the title with Rule 4.3.

Indications in the Request Concerning Applicant and Inventor

Indications Concerning the Applicant

78. The request must contain the prescribed indications concerning the applicant(Article 14(1)(a)(ii)). The relevant prescriptions are contained in Rules 4.4 and 4.5(a) to (d).Where the applicant is registered with the receiving Office, the request may also indicate thenumber or other indication under which the applicant is so registered (Rule 4.5(e)).

79. Names and Addresses. Under Rule 4.5(a)(i) and (ii), The the family name must beindicated before the given name(s); titles and academic degrees must be omitted; names of legalentities must be indicated by their full official designations (generally recognized abbreviationsof the legal status of such entities, if part of their full official designations, are howeverpermitted—for example, “Ltd.”, “Inc.”, “GmbH”); the address must be indicated in such a waythat it allows prompt postal delivery; if the country can be identified on the basis of the two-letter code and/or postal code (for example, CH-1211 Geneva 20), no further indication of thecountry is necessary. For corrections, including additional matter to be deleted ex officio, seeparagraphs 153 to 165 and Annex B.

80. Any name or address written in characters other than those of the Latin alphabet must beindicated also in characters of the Latin alphabet either as a mere transliteration or through



translation into English. Names of countries must be translated into English (Rule 4.16). Wheresuch translation or transliteration has not been given or is defective, the receiving Office maymake or correct it ex officio (paragraphs 161 to 165).

81. Only one address may be indicated per applicant, with the following two exceptions. First,where no agent is appointed in Box No. IV of the request but one of the applicants is appointedas common representative, an address for the latter, other than that appearing in Box No. IIor III, may be indicated in Box No. IV of the request (for example, the address of the patentdepartment of a legal entity). Second, where neither an agent nor a common representative isappointed, the applicant may indicate in Box No. IV of the request a special address forcorrespondence, in which case the corresponding check-box, at the bottom, must be marked(paragraph 118).

82. Nationality and Residence. Indications relating to nationality (paragraph 83) and residence(paragraph 84) are required in order to determine whether the applicant is entitled to file theinternational application with the receiving Office. The question whether an applicant is aresident or national of the Contracting State of which he claims to be a resident or nationaldepends on the national law of that State and is decided by the receiving Office (Rule 18.1(a)).Where neither the State of nationality nor the State of residence of any of the applicants is aState for which the receiving Office is competent, that Office transmits the internationalapplication under Rule 19.4 to the International Bureau (paragraphs 274 to 277).

83. For each applicant, the nationality must be indicated by the name of the State of which theperson is a national in compliance with Rules 4.5(a)(iii) and (b) and 18.1. In any case, however,a legal entity constituted according to the national law of a State is considered a national of thatState (Rule 18.1(b)(ii)).

84. For each applicant, the residence must be indicated by the name of the State of which theapplicant is a resident in compliance with Rules 4.5(a)(iii) and (c) and 18.1. In any case,however, possession of a real and effective industrial or commercial establishment in a State isconsidered residence in that State (Rule 18.1(b)(i)). If no State of residence is expresslyindicated in the request, it is assumed that the country of the address indicated for the applicantis the applicant’s State of residence (Notes appearing in Boxes Nos. II and III of the request);the receiving Office includes ex officio (paragraphs 161 to 165) the indication of the State ofresidence accordingly. If the address does not contain any indication of the country and thecountry cannot be identified on the basis of other elements in that address, the receiving Officeinvites (Form PCT/RO/106) the applicant under Rule 26 to indicate the country of the addressand the State of residence.

84A. If there is more than one applicant, according to Rule 26.2bis(b), it is sufficient, for thepurposes of Article 14(1)(a)(ii), that the indications required under Rule 4.5(a)(ii) and (iii) beprovided in respect of one of them who is entitled according to Rule 19.1 to file theinternational application with the receiving Office. In this case, the receiving Office does notinvite the applicant to provide missing indications under Rule 26.1.

85. Names of States must be indicated by their full name, a generally accepted short title or thetwo-letter code as appearing in WIPO Standard ST.3 (Section 115). The names and two-lettercodes are also listed in Annex K of the PCT Applicant’s Guide, Volume I/B.

86. Where an applicant has indicated two or more States of which the applicant is a residentand/or two or more States of which the applicant is a national, the receiving Office does not takeany actions as the International Bureau will include in the international application as published



only the first State mentioned which is a PCT Contracting State, or, if none of the indicatedStates is a Contracting State, the first mentioned State.

87. Dependent Territories and Other Entities Not Being States. Rule 4.5(b) and (c) requiresthe indication of the State of which the applicant is a national and the State of which theapplicant is a resident. Where the applicant has indicated, in lieu of the State of nationality orState of residence, the name of a dependent territory or other entity which is not regarded as a“State” by the United Nations, or where the applicant has made no indication of a State, thereceiving Office may invite the applicant to correct the request so as to comply with therequirements of that Rule or, subject to the national law and practice applicable by the receivingOffice, and if sufficient information is available to it, make an ex officio correction(paragraphs 161 to 165). Such corrections are generally not obligatory, but may be decisivewhere the request does not otherwise contain an indication, in connection with any applicant, ofa State of nationality or State of residence being a PCT Contracting State, so that, without sucha correction, no applicant would have the right to file an international application underArticle 11(1)(i) (paragraphs 82 to 86). With regard to the international publication of theinternational application, the practice of the International Bureau is to publish indications ofState of nationality and State of residence only where they are of States regarded as such underthe practice of the United Nations; otherwise the indication “-” will replace that of a State in theGazette and pamphlet (“[-/-]” will denote no indication of either States of nationality and ofresidence).

87A. Where the applicant is an intergovernmental organization, such as the World HealthOrganization, no nationality should be indicated and the receiving Office should not request ormake a correction since intergovernmental organizations generally do not possess a nationality.

Indications Concerning the Inventor

88. Indications concerning the inventor must be made where the national law of at least one ofthe designated States requires that the name of the inventor be furnished at the time of filing anational application (Rule 4.1(a)(iv)). See PCT Applicant’s Guide, Volume I/A, Annexes B1and B2, for those States and regional patent systems which require such indications. Where thenational law of none of the designated States requires that the name of the inventor be furnishedat the time of filing a national application, the request may nevertheless contain indicationsconcerning the inventor (Rule 4.1(c)(i)). Where indications concerning the inventor are requiredunder Rule 4.1(a)(iv) or included under Rule 4.1(c)(i), they must include the name and addressof the inventor, or, if there are several inventors, of each of them, in accordance with Rules 4.4and 4.6(a) (paragraph 79). It is to be noted that a legal entity cannot be an inventor. For personsnamed as inventors only, indications of nationality and/or residence are not required. Any suchindication should be deleted ex officio by the receiving Office.

89. If the applicant is the inventor, the check-box “This person is also inventor” in Box No. IIof the request or “applicant and inventor” in Box No. III of the request, as the case may be, mustbe marked (Rule 4.6(b)). These check-boxes must not be marked if the applicant is a legalentity. A person must not be named more than once in Boxes Nos. II and III of the request, evenwhere that person is both applicant and inventor. In Box No. III of the request, one of the check-boxes on the right-hand side must always be marked for each person named.

90. If no inventor is indicated, although the indications referred to under paragraph 88 arerequired under Rule 4.1(a)(iv), the receiving Office may draw (Form PCT/RO/132) theapplicant’s attention to the fact that the law of certain designated States requires that theinventor be named and prescribed data relating thereto be furnished in the request. If no



response to the communication has been received from the applicant before the transmittal ofthe record copy, the receiving Office sends a copy of that communication to the InternationalBureau. For corrections, including ex officio corrections, see paragraphs 153 to 165 andAnnex B.

Indications Concerning Applicant and Inventor Where the United States of America IsDesignated

91. Article 27(3) provides that where the applicant, for the purposes of any designated State, isnot qualified according to the national law of that State to file a national application because theapplicant is not the inventor, the international application may be rejected by the designatedOffice concerned. At present, only the national law of the United States of America containssuch a provision. Therefore, where the United States of America is one of the designated States,all of the inventors must be named as applicants (as well as inventors) for the purposes of thatdesignation. The check-box “This person is also inventor” (in Box No. II of the request) or“applicant and inventor” (in Box No. III of the request) must be marked. For examples, seeAnnex B.

92. Where the United States of America is designated and the inventor is named but is not alsoindicated as applicant, the receiving Office should ex officio make the required marking of thecheck-boxes in the request (paragraph 91 and Annex B), unless the inventor is deceased(paragraphs 96 to 99 and 161 to 165). Note that a legal entity cannot be an inventor(paragraph 88).

93. Where no inventor is named for the purpose of the designation of the United States ofAmerica and the designation of the United States of America has not been withdrawn isdesignated and no inventor is named, the receiving Office informs the applicant(Form PCT/RO/132) that the application may be rejected by the United States Patent andTrademark Office as a designated Office because only the inventor is qualified to file a nationalapplication in the United States of America (Article 27(3));. Note that a legal entity cannot be aninventor (paragraph 88). on the other hand, if the United States of America is designated but noinventor is named and the applicant is indicated as the applicant for all designated States exceptthe United States of America, the receiving Office should delete ex officio the designation of theUnited States of America as there is no applicant for that State and inform the applicantaccordingly.

94. [Deleted]Where the United States of America is not designated and the applicant isindicated as applicant for the purposes of all designated States except the United States ofAmerica, the receiving Office should ex officio correct the marking of the check-boxes in BoxesNos. II and III of the request so as to indicate “applicant for all designated States.” For ex officiocorrections, see paragraphs 161 to 165.

Different Applicants or Inventors for Different Designated States

95. Rule 4.5(d) provides that the request may, for different designated States, indicate differentapplicants. Different applicants may also be indicated for different States designated for aregional patent (Section 203(a)). Where a particular State has been designated For the purposeof the designation of States for both a national patent and a regional patent, the same applicantor applicants must be indicated for both designations (Section 203(b)). Where different persons(natural persons or legal entities) are applicants for different designated States other than theUnited States of America (paragraphs 91 to 94), that is, where none of the other three check-boxes in Boxes Nos. II and III of the request fits the circumstances, the check-box “the States



indicated in the Supplemental Box” must be marked and the Supplemental Box of the requestshould be used. In such a case, the name of the person must be repeated in that SupplementalBox with an indication of the designated State or States for which that person is applicant(item 1(ii) in that Box). In that Supplemental Box, different persons may also be indicated asinventors for different designated States (for example, where, in this respect, the requirements ofthe national laws of the designated States are not the same).

Indications in the Case of a Deceased Applicant or Inventor

96. If the applicant dies, the successor to the rights of that applicant (for example, heir or legalrepresentative) should request to be recorded as the new applicant under Rule 92bis(paragraphs 309 to 313). The reason for the requested recording of a change must be indicated.

97. If the inventor died before the international application was filed, the request must indicateonly the name of the inventor with an indication that the inventor is deceased, for example:JONES, Bernard (deceased). For the case of a designation for which the inventor must be theapplicant, see paragraph 98.

98. If the deceased applicant was the inventor and if for the purpose of the designation of theUnited States of America is designated, the successor to the rights of the deceasedapplicant/inventor must be indicated in the request as the new applicant (but not inventor) forthe United States of America. Where there is a successor to the rights of the deceased inventor,this indication should be made as follows:

SMITH, Alfred, legal representative of JONES, Bernard (deceased) orJONES, Helen, sole heiress of JONES, Bernard (deceased)

followed by indications of the address, nationality and residence of the legal representative orheir, as the case may be. The nationality and residence of the successor to the rights of thedeceased inventor must be indicated.

99. The same applies where the inventor dies during the international phase and a request forthe recording of a change in the person of the applicant is made (paragraphs 309 to 313). Whereno replacement sheet of the corresponding sheet(s) of the request and/or additional sheet, as thecase may be, was filed, the receiving Office transfers the change to the record copy (which mayimply adding a sheet to the request form). If the deceased applicant/inventor had appointed anagent or common representative and the successor to the rights of that deceasedapplicant/inventor intends to be represented by that same agent or common representative, thesuccessor to the rights of the deceased applicant/inventor must appoint that agent and submit acorresponding power of attorney.

Designation of States

100. States. The Contracting States in which protection is desired must be designated in therequest in accordance with Rules 4.1(a)(iv) and 4.9(a), by marking the applicable check-boxes.Only States which are Contracting States on the date of filing the international application maybe validly designated. For the list of Contracting States, see the PCT Applicant’s Guide,Volume I/A, Annex A, and, for updated information between the issuance of updates of thePCT Applicant’s Guide, see Section IV of the PCT Gazette and the PCT Newsletter. Thespecific designation of at least one Contracting State is one of the requirements for aninternational filing date to be accorded (Article 11(1)(iii)(b) and Under Rule 4.9(a), the filing ofa request constitutes



(i) the designation of all Contracting States that are bound by the Treaty on the internationalfiling date;

(ii) an indication that the international application is, in respect of each designated State towhich Article 43 or 44 applies, for the grant of every kind of protection which is available byway of the designation of that State (see paragraphs 108 to 112); and

(iii) an indication that the international application is, in respect of each designated State towhich Article 45(1) applies, for the grant of a regional patent and also, unless Article 45(2)applies, a national patent.

This is also valid where the applicant does not use the request Form PCT/RO/101, where theapplicant uses an old request form, issued before 1 January 2004, that does not list allContracting States, or where the international filing date is changed to on or after 1 January2004. Consequently, the receiving Office does not check whether all Contracting States aredesignated and is not required to make any ex officio corrections by adding designated States.

101. Under Rule 4.9(b), the applicant may, by marking the applicable check-box(es), indicatethat Germany, the Republic of Korea and/or the Russian Federation are not designated for anykind of national protection. This possibility is restricted to those three States as no other Statehas notified the International Bureau that Rule 4.9(b), which provides for the possibility toexclude States from designation, is applicable in respect to the designation of that State.Therefore, no other State can be excluded from the automatic and all-inclusive coverage ofdesignations and no withdrawals of designations are allowed in the request. If the applicant addsin the request explicit indications as to the designation of a specific contracting State or awithdrawal of a designation, such indication should be deleted ex officio by the receiving Office,as provided in Rule 4.18(b) and Section 303 (paragraphs 161 to 165). However, the applicantmay submit a separate notice of withdrawal of designation under Rule 90bis.2. The designationsof Germany for the purposes of a European patent and of the Russian Federation for thepurposes of a Eurasian patent are not affected so that both States remain designated for regionalprotection if the respective checkboxes are marked. Regarding omission of States from regionaldesignations, and States which may further details concerning the indication that Germany, theRepublic of Korea or the Russian Federation shall not be designated only for the purposes of aregional patent any kind of national protection, see the Notes to the request form relating to BoxNo. V.

102. States Not Bound by the PCT Listed on the International Filing DatePrinted RequestForm. States which are not Contracting States on the date of filing the international applicationare not designated by filing a request and cannot be designated in the request or subsequently. Ifthe applicant has added in Box No. V of the printed request form, in the space reserved fordesignating States which have become party to the PCT after the international filing dateissuance of that printed request form, the names of such States, specific designations are onlyconsidered to have been made if the corresponding check-boxes are marked. As outlined inSection 318, the receiving Office cancels ex officio (paragraphs 161 to 165) the purporteddesignation of any State which is not a Contracting State (Section 318 paragraphs 161 to 165).

103. [Deleted]Where the applicant has added to the list of designations for the purposes ofobtaining a national patent, a State which is party to a regional patent treaty (for example, theEuropean Patent Convention or the ARIPO Harare Protocol) and which may only be designatedfor the purposes of that regional patent (that is, where the State concerned has “closed thenational route”) the receiving Office deletes such indication ex officio (Section 327 andparagraphs 161 to 165). If in such a case no designation was made for the purposes of obtaining



a regional patent which would include the State concerned, the receiving Office ex officio marksthe check-box for that regional patent and deletes the names of the States of that regional patentsystem except for the name of the State which was indicated for the purposes of obtaining anational patent.

104. [Deleted]Where the applicant has indicated, for the purposes of obtaining a nationalpatent, a State which is party to both the PCT and the OAPI Agreement and the applicant hasnot marked the check-box for the purposes of obtaining an OAPI patent, the receiving Officemarks ex officio the check-box for the OAPI patent. It deletes ex officio the name of the Stateindicated for the purposes of obtaining a national patent.

105. [Deleted]If the request contains (for example, on the dotted lines, at the bottom of BoxNo. V of the request) an indication added by the applicant to the text which appears on theprinted form to the effect that the applicant, in addition to the States specifically designated,designates “all States which have become bound by the PCT after issuance of this sheet,” thatgeneral statement is to be regarded as indicating the intention to effect specific designations, forthe purposes of obtaining national patents, under Rule 4.9(a). Since such designations do notcomply with Rule 4.9(a)(i), the receiving Office should make the necessary corrections exofficio, as follows: first, by adding to the list of specific designations for national patents thename of any State which has become bound by the PCT after the date of issuance of the versionof the sheet of the printed request form used by the applicant and was so bound on or before theinternational filing date; and, second, by deleting the applicant’s statement. For States whichcan only be designated for the purposes of obtaining a regional patent, see paragraphs 103and 104. The applicant’s attention should be drawn (Form PCT/RO/102) to the fact that, whereless than the maximum number of designation fees have been (or are due to be) paid(paragraph 246), the correction would require the payment of additional designation fees. Wherethe time limit for paying designation fees has already expired by the time the applicant isnotified of the correction, an invitation under Rule 16bis should be issued (Form PCT/RO/133)in respect of the additional fees due (paragraphs 259 to 262 and 266). Where the applicant failsto pay the additional designation fee(s) and, where applicable, the required late payment feeunder Rule 16bis, the receiving Office declares (Form PCT/RO/116) the designations of theStates concerned withdrawn under Article 14(3)(b). For ex officio corrections, seeparagraphs 161 to 165.

106. [Deleted]Precautionary Designation of States Under Rule 4.9(b). For the applicant’ssafeguard, the lower part of Box No. V of the printed request form contains a pre-printedstatement indicating the applicant’s wish to make, in addition to the specific designations madeby marking the check-boxes in the upper part of Box No V of the request form, a precautionarydesignation of all Contracting States which are not specifically designated. If, after filing theinternational application, the applicant notices that a specific designation has been omitted, thesituation may be redressed by confirming the precautionary designation concerned, providedthat certain conditions are fulfilled (paragraphs 296 to 301). If the applicant wishes to excludecertain designations from the scope of the above-mentioned statement, these designations mustbe indicated in the Supplemental Box of the request (under item 2). The above-mentionedstatement may be crossed out by the applicant where the applicant does not wish to takeadvantage of this safeguard.

107. [Deleted]Extension of European Patents. The protection conferred by European patentscan be extended to certain States which are not Contracting States of the European PatentConvention and cannot themselves be designated for a European patent. Such an extension isavailable only if an agreement relating to such extension has been concluded between theEuropean Patent Organisation and the Government of the State concerned. Regarding the States



for which such agreements exist, see the Notes to the request form relating to Box No. V.Where the applicant desires to obtain such protection via the PCT, the request must contain boththe designation of the State concerned for the purposes of a national patent and the designation,for the purposes of obtaining a European patent, of at least one PCT Contracting State which isalso party to the European Patent Convention. The request may not contain any indicationreferring to the extension of a European patent; in case it does, the receiving Office shoulddelete such indication ex officio, as provided in Rule 4.17(b) and Section 303 (paragraphs 161to 165). Where the specific designation of the State concerned has not been made, the applicantmay, within 15 months from the priority date, confirm the precautionary designation of thatState (paragraphs 296 to 301). No further action in relation to the desired extension is requiredfrom the applicant during the international phase; the extension procedure takes place inconnection with entry into the regional phase before the European Patent Office asdesignated/elected Office.

Kind of Protection or Treatment

108. Under Rule 4.9(a)(ii), the filing of a request shall constitute an indication that theinternational application is, in respect of each designated State to which Article 43 or 44 applies,for the grant of every kind of protection which is available by way of the designation of thatState. Upon filing of the request, the applicant will obtain an automatic and all-inclusivecoverage of every kind of protection available in any designated State. Under Rule 4.9(a)(ii), nofurther specification as to the kind of protection and no exclusion of certain kinds of protectionis possible. If such indications are included in the request, they should be deleted by thereceiving Office ex officio, as provided in Rule 4.18(b) and Section 303 (paragraphs 161to 165). However, the applicant may submit a separate notice of withdrawal of certain kinds ofprotection (paragraphs 314 and 322). Note that the applicant may indicate, under Rule4.11(a)(iii) and (iv), an intention to make an indication under Rule 49bis.1 of the wish for theinternational application to be treated as an application for certain kinds of protection in certainStates (this applies only to applications for patents of addition, certificates of addition,inventors’ certificates of addition, utility certificates of addition or continuation or continuation-in-part of an earlier application; see paragraph 116A), but this does not affect the extent of thedesignation made under Rule 4.9 (Rule 4.11(b)).Unless otherwise indicated in connection withthe designation of any State, each designation is treated as an expression of the wish to obtain apatent in the designated State. However, if the applicant wishes the international application tobe treated in any designated State (whose national law provides for that kind of protection) as anapplication not for a patent but for an inventor’s certificate, a utility certificate, a utility model, a“petty patent,” a patent of addition, a certificate of addition, an inventor’s certificate of additionor utility certificate of addition, this must be indicated in Box No. V of the request on the dottedline following the name of the designated State (Article 43, Rule 4.12(a) and Section 202(a)).See also the Notes to the request form relating to Box No. V. Annexes B1 and B2 of the PCTApplicant’s Guide, Volume I/A, indicate, for each Contracting State, the kinds of protectionavailable.

109. [Deleted]If, in respect of any designated State whose national law provides for thepossibility of seeking a patent in addition to a kind of protection other than a patent, theapplicant wishes to designate the State concerned for both purposes, an indication that suchother kind of protection is sought in addition to a patent, using the words “and utility model” (orother kind of protection, as appropriate), must be inserted in Box No. V of the request, on thedotted line following the name of the State concerned. For the kinds of protection available ineach State, see the Notes to the request form relating to Box No. V and Annexes B1 and B2 ofthe PCT Applicant’s Guide, Volume I/A.



110. Where different types of protection are available in the same State, they are available onlyfor the same applicant; for example, where it is possible to obtain a utility model in addition to apatent, it is not possible to indicate different applicants for these different types of protection inrespect of the same designated State.

111. If the words “and utility model” (or other kind of protection) are indicated on the dottedline following the name of the designated State but such kind of protection can only be soughtinstead of, and not in addition to, a patent, the receiving Office invites the applicant to clarify;no ex officio correction should be made. If the applicant wishes the international application tobe treated in any designated State (whose national law provides for that kind of protection) as anapplication not for a patent but for an inventor’s certificate, a utility certificate, a utility model, a“petty patent,” a patent of addition, a certificate of addition, an inventor’s certificate of additionor utility certificate of addition, he can indicate so to the national Office, under Rule 49bis.1,only when performing the acts referred to in Article 22 for entering the national phase(concerning the indications under Rule 4.11(a)(iii) and (iv), se paragraph 116A).

112. [Deleted]Where a title (patent, certificate, inventor’s certificate) of addition is sought, orwhere the applicant wishes the international application to be treated, in respect of thedesignation of the United States of America, as an application for a continuation or acontinuation-in-part (Article 43 and Rule 4.14), that fact must be indicated following the nameof the designated State, and the parent application or patent to which the internationalapplication relates must be identified in the Supplemental Box of the request; see item 1(v) ofthat Supplemental Box. Where indications relating to a parent application or patent are notfurnished or appear to be defective, the receiving Office draws the applicant’s attention to thatfact and gives the applicant an opportunity to correct them (paragraph 160).

Non-Prejudicial Disclosures

113. As to the procedure concerning declarations as to non-prejudicial disclosures orexceptions to lack of novelty, see paragraphs 192A to 192E.

The Competent International Searching Authority

114. The receiving Office checks whether the International Searching Authority specified bythe applicant is competent to carry out the international search. Each receiving Office maydeclare one or more International Searching Authorities as competent for the searching ofinternational applications filed with it (Article 16 and Rules 35.1 and 35.2).

115. If the International Searching Authority indicated by the applicant is competent, or if onlyone International Searching Authority is competent, the receiving Office indicates the name ofthat Authority on the last sheet of the request. Where more than one International SearchingAuthority is competent and no indication as to the choice of International Searching Authority ismade in Box No. VII of the request, the receiving Office checks whether such indicationappears on any other paper filed in connection with the international application, such as the feecalculation sheet, or on any translation submitted for the purposes of international search.Where no such indication is made, the receiving Office invites the applicant to indicate a choiceas to the competent Authority. Form PCT/RO/132 may be used for that purpose. The receivingOffice proceeds in the same manner where more than one Authority is competent and theapplicant has indicated an Authority which is not competent in respect of the application inquestion. Where more than one International Searching Authority is competent, the applicantmay make a change to the choice of Authority if the search copy has not yet been transmitted tothe International Searching Authority originally chosen by the applicant. The receiving Office



deletes the indication of any non-competent International Searching Authority ex officio(paragraphs 161 to 165).

Reference to Earlier Search, Continuation or Continuation-in-Part, or Patent Applicationor Grant

116. Where a search (international, international-type or other) has already been requestedfrom or carried out by the International Searching Authority and the applicant requests thatAuthority to base the international search report wholly or in part on the results of that search,the corresponding indications must be made in Box No. VII of the request (Rule 4.11).

116A If the applicant intends to make an indication under Rule 49bis.1(a) or (b) of the wishthat the international application be treated, in any designated State, as an application for apatent of addition, certificate of addition, inventor’s certificate of addition or utility certificate ofaddition under Rule 49bis.1(c) (Rule 4.11(a)(iii)), or the applicant intends to make an indicationunder Rule 49bis.1(d) of the wish that the international application be treated, as an applicationfor a continuation or a continuation-in-part of an earlier application (Rule 4.11(a)(iv)), therequest shall so indicate under item 2 or 3 in the supplemental box and shall, as the case may be,identify the application in respect of which the earlier search was made or otherwise identify thesearch, or indicate the relevant parent application or parent patent or other parent grant. Theinclusion in the request of such an indication shall only serve the purpose of international searchand have has no effect on the all inclusive designation for every kind of protection availableunder Rule 4.9.

Agent, Common Representative and Address for Correspondence

117. Only a person who has the right to practice before the receiving Office may be appointedand indicated as agent in Box No. IV of the request. Depending on the national law applicable,the agent may be a natural person, a legal entity, or it may also be a firm or partnership that isnot a legal entity. Where the person indicated as agent in Box No. IV does not have the right topractice before the receiving Office, the receiving Office deletes ex officio the checkbox “agent”and marks instead the checkbox “address for correspondence”. If the person indicated in BoxNo. IV as an agent has also signed the request in Box No. X, the receiving Office also deletes exofficio the signature in Box No. X and invites the applicant to furnish the missing signature(Form PCT/RO/106, see also paragraph 123). The receiving Office notifies the applicantaccordingly (Form 146, see also paragraph 165). Where one of the applicants is appointed ascommon representative that applicant must be entitled to file an international application (thatis, that applicant must be a national or resident of a Contracting State); such applicant may be soappointed only if no agent has been appointed by all the applicants (that is, if there is no“common agent”) (Rule 90.2(a)). Regarding signature requirements, see paragraphs 122 to125A.

117A. The appointment of an agent or common representative may be effected by theapplicant signing the request or a separate power of attorney (Rule 90.4(a)). The appointment ofan agent may also be effected by referring in the request, or a separate notice, to a general powerof attorney (that is, an existing separate power of attorney appointing that agent to represent theapplicant in relation to any international application which may be filed by that applicant)(Rule 90.5). The original of such general power of attorney must be deposited with the receivingOffice (that is, it must either have already been deposited with that Office or it must accompanythe international application) and a copy of it must accompany the request or separate notice(Rule 90.5(a)).



117B The receiving Office may waive the requirement that a separate power of attorney besubmitted to it (Rule 90.4(d)), or that a copy of a general power of attorney is attached to therequest (Rule 90.5(c)). The receiving Office may therefore not require the applicant to submit aseparate power of attorney, or a copy of a general power of Attorney, or may waive thisrequirement only for certain cases. Any waiver by a receiving Office is notified to theInternational Bureau and is published in the Gazette (Sections 336 and 433). To the extent thatthe receiving Office has waived the requirement of submission of a separate power of attorney,Rule 90.4(c) shall not apply and the receiving Office does not need to check defects relating to aseparate power of attorney and does not invite the applicant to correct a defect. Regardingsignature requirements, see paragraphs 122 to 125A.

117C Where the agent or the common representative submits any notice of withdrawal of theinternational application, of designations, or of priority claims (Rule 90bis.1 to 90bis.3), theagent or the common representative has also to submit a separate power of attorney, or a copy ofthe general power of attorney , as the corresponding requirement to submit a separate power ofattorney, or a copy of the general power of attorney, may not be waived under Rule 90.4(e) and90.5(d).

118. For the manner of indicating names and addresses, see Rule 4.4 (paragraphs 79 to 81 and85). Where one of the applicants is appointed as common representative, the address indicatedin Box No. IV of the request for that applicant may differ from the address indicated for thatsame applicant in Box No. II or III of the request. The check-box “Address for Correspondence”should only be marked if neither an agent nor a common representative has been appointed. Forex officio corrections, see paragraphs 161 to 165.

119. Where the receiving Office receives a separate document containing the appointment(power of attorney), or the revocation or renunciation of the appointment, of an agent or acommon representative, it checks whether that document is signed (Rule 90.4(a)) and complieswith Rule 4.4. It notifies (Form PCT/RO/123) the International Bureau and the InternationalSearching Authority and transmits a copy of that document to them. If the record copy and/orsearch copy have not yet been transmitted, the receiving Office transmits a copy of the power ofattorney, or document containing the revocation or renunciation of an appointment, with therecord copy and/or search copy (Section 328(b)). Where a change concerning the agent orcommon representative (for example, the person, the name or the address) is to be recorded, thereceiving Office notifies (Form PCT/RO/123) the International Bureau accordingly (Section328).

120. Where the receiving Office does not recognize that document as a valid power of attorney(for example, where power of attorney is not signed properly the person is not entitled topractice before the receiving Office concerned or where the document is otherwise defective),the receiving Office notifies (Form PCT/RO/124) the applicant, or, in case of a renunciation, theagent, of any defect and of the fact that the document containing the appointment, revocation orrenunciation is considered non-existent until the defect is corrected (Rules 90.4(c) and 90.6(e)).If the defect is corrected, the procedure outlined in the preceding paragraph applies.

120A. Where the agent is registered with the national Office acting as the receiving Office, thenumber or other indication under which the agent is so registered may be indicated(Rule 4.7(b)).

121. Further references to agents and common representatives are made in these Guidelines, inparticular in the following paragraphs: paragraph 9 (meaning of “applicant”), paragraphs 23to 26 (correspondence intended for the applicant), paragraph 75A (form of the request),



paragraph 81 (address), paragraph 99 (deceased applicant), paragraphs 122 to 125 (signature) ,paragraphs 127 to 128 (signature for legal entity); paragraph 192C (declarations), andparagraphs 309 to 313(recording of changes).

Signature

122. The receiving Office checks whether the international application is signed as providedfor in the Regulations (Article 14(1)(a)(i)); the relevant provisions are contained in Rules 2.1,4.1(d), 4.15, 90.4(c), 90.5(a)(ii) and 90.6(d). The request must be signed by all applicants (Rule4.15) or, on their behalf, by an appointed agent or appointed common representative for whom apower of attorney signed by all applicants is submitted. However, if there is more than oneapplicant, it shall be sufficient, for the purposes of Article 14(1)(a)(i), that the request be signedby one of them (Rule 26.2bis(a)). In this case, the receiving Office should not invite theapplicant to furnish missing signatures under Rule 26.1.

122A. Where the receiving Office has waived the requirement of a separate power of attorneyor of a copy of a general power of attorney, it does not check further the signature requirementsin this case. The same applies in respect of the appointment of a common representative. If thatagent also signs in Box X the signature requirements under Article 14(1) have been fulfilledsince he signed the application on behalf of the applicants. A notice of withdrawal, however, hasto be signed by or on behalf of all applicants (Rule 90bis.5(a), paragraphs 117C and 314).

123. Where that the signature requirement is not fulfilled to the extent indicated in paragraph122, the receiving Office invites (Form PCT/RO/106) the applicant, under Article 14(1)(b) andRule 26, to correct the defect by sending, together with the invitation to correct, a copy of therelevant sheet of the request, to be returned by the applicant after affixing thereto the prescribedsignature(s) (Section 316). Where not all requirements relating to the signature of theinternational application as outlined in paragraphs 124 to 131 are complied with, seeparagraphs 153 to 159.

124. Request Signed by Agent or Common Representative. Where the request is signed by anagent or common representative, the appointment of that agent or common representative mustbe valid. The agent must have the right to practice before the receiving Office concerned inaccordance with Rule 90.1. An appointed common representative must be a national or residentof a Contracting State (paragraph 117). A power of attorney appointing the agent or thecommon representative must be signed by each applicant who is to be represented; the originalof such power(s) of attorney should be filed with the international application, unless thereceiving Office has waived this requirement under Rule 90.4(d) (paragraphs 117B and 117 C)(Rule 90.5(c)).

125. Where the agent is appointed in a general power of attorney deposited with the receivingOffice (paragraph 117A), that power must similarly be signed by each applicant who is namedtherein. However, the copy of such power which must be filed with the internationalapplication, unless the receiving Office has waived this requirement under Rule 90.5(c)(paragraph 117B), need not itself be separately signed (Rule 90.5(a)(ii)).

125A. If the power of attorney (including an original general power of attorney) is not signed,or if a required power of attorney (paragraph 117B) is missing or is not signed, or if the nameand address of the appointed person does not comply with Rule 4.4 the power of attorney isconsidered non-existent (Rule 90.4(c)). Similarly, the appointment of an agent is not consideredto have been effected in a general power of attorney if the original of such power has not beendeposited with the receiving Office or if the international application is not accompanied by a



copy of such power, unless the receiving Office has waived this requirement under (Rule90.5(c) (paragraph 117B). In any of these cases, the international application is considered notto have been signed and the receiving Office invites (Form PCT/RO/106) the applicant tocorrect the defect under Rule 26.

126. Authorization to Sign on Behalf of a Legal Entity. Where the applicant is a legal entity,the request or the power of attorney must be signed by a person entitled to act on behalf of thatentity, and an indication of the name of and the capacity in which that person signs must bemade. Where an individual is an applicant and at the same time acts on behalf of a legal entitywhich is also an applicant, a single signature is sufficient, provided that an indication is madethat the person signs in both capacities.

127. If an individual signs the international application in the name of a legal entity (and not asan appointed agent), the receiving Office should, in ordinary circumstances, not require furtherevidence of the person’s right to sign for the applicant. The receiving Office may apply relevantprovisions of the national law when deciding whether the mere indication of a certain capacity(such as “president,” “secretary,” etc.) is sufficient or whether the applicant should be invited tofurnish evidence. In ordinary circumstances, however, an indication that the person signs as an“authorized signatory” for the applicant concerned is sufficient. If it is not clear from thewording of the request whether the signatory has signed the request as an authorized signatoryof the applicant rather than as an appointed agent, the receiving Office should seek clarification.

128. A person who signs the request in the capacity of an authorized signatory for a legalentity may, in principle, and provided he or she has the right to practice before the receivingOffice, appoint himself or herself as an agent by indicating his or her own name in Box No. IVof the request. While such a practice is unusual, there may be sound reasons why the applicantmight choose to follow it, for example, where there are two or more applicants and it is desiredthat the person concerned be appointed as common agent for all the applicants, in addition tobeing an authorized signatory for one of them, or if it is desired that a number of persons,including the signatory, be appointed as common agents.

129. Applicant/Inventor for the United States of America Refuses to Sign or Cannot BeFound or Reached. Where an applicant/inventor for the United States of America refuses tosign the request (or a power of attorney) or cannot be found or reached after diligent effort, therequest need not be signed by that applicant if it is signed by at least one other applicant and astatement is furnished explaining, to the satisfaction of the receiving Office, the lack of thesignature concerned. If the receiving Office considers that statement to be satisfactory, it sends acopy thereof to the International Bureau with an indication that that statement replaces themissing signature. This would also apply where all the joint applicants/inventors for the UnitedStates of America refused to sign or could not be found or reached after diligent effort, providedthat at least one other applicant has signed the request or a power of attorney (Rule 4.15(b)).However, the receiving Office does not invite to furnish missing signatures where at least oneapplicant has signed the request (paragraphs 122 and 153).

130. While it is the receiving Office which, under Rule 4.15(b), must be satisfied as to theexplanation of the lack of signature at the time of filing the international application, the matteris ultimately one to be determined by the United States Patent and Trademark Office as adesignated Office, when the application proceeds into the national phase.

131. If the receiving Office finds that the signature of an applicant/inventor for the UnitedStates of America is still missing after expiration of the time limit fixed in the invitation tocorrect this defect (Form PCT/RO/106), the receiving Office, before it declares the international



application withdrawn, may draw the attention of the applicant to the possibility of furnishing astatement under Rule 4.15(b) explaining the lack of the signature concerned.

Compliance with the Physical Requirements Referred to in Rule 11

General

132. The international application must comply to the extent provided for in the Regulationswith the prescribed physical requirements (Article 14(1)(a)(v)). Those physical requirements areset out in Rule 11 and relate to fitness for reproduction, size and numbering of sheets, margins,writing of text matter, drawings, etc.

133. Where the international application is filed in a language of publication (Rule 48.3(a)) andparagraph 55), the receiving Office checks whether the application complies with thoserequirements to the extent that compliance therewith is necessary for the purpose of reasonablyuniform international publication (Rule 26.3(a)(i)) as outlined in paragraphs 139 to 146.

134. Where the international application is filed in a language of publication (Rule 48.3(a)) buta translation is furnished under Rule 12.3 for the purposes of international search (paragraphs 66to 71), that translation is checked for compliance with the physical requirements referred to inRule 11 only to the extent that compliance therewith is necessary for the purpose of satisfactoryreproduction (Rule 26.3(a)(ii)), since the sheets of the translation will not be used for thepurposes of international publication. The receiving Office checks that the sheets are sopresented as to admit of direct reproduction by photocopy, scanning or other means inaccordance with Rule 11.2 and that the print is dark and well contrasted (Rule 11.9(d)).

135. Where the international application is filed in a language which is not a language ofpublication, in which case not the original text but a translation furnished by the applicant underRule 12.3 or 12.4 will be published, the receiving Office checks that original text of theinternational application for compliance with the physical requirements referred to in Rule 11only to the extent that compliance therewith is necessary for the purposes of satisfactoryreproduction (Rule 26.3(b)(i) and paragraph 134). The translation and the drawings are checkedfor compliance with the physical requirements referred to in Rule 11 to the extent thatcompliance is necessary for the purpose of reasonably uniform international publication(Rule 26.3(b)(ii)). This also applies where the applicant has furnished a translation of theabstract or drawings containing the translation of text matter into the language in which theinternational application is to be published (Rule 26.3ter(a)).

136. Where a translation is required under Rule 12.3 or 12.4 and drawings which are filed withthe original of the international application do not contain text matter, such drawings need notbe filed again with the translation.

137. Where the applicant must furnish a translation of the abstract or any text matter of thedrawings into a language of publication, the provisions relating to defects under Article 14,including checking of physical requirements, apply mutatis mutandis (Rule 26.3ter(a)).

138. If the international application does not meet the physical requirements as outlined in thepreceding paragraphs, the receiving Office invites (Form PCT/RO/106) the applicant to correctany defect as provided for in Rule 26 (paragraphs 153 to 159).

139. Arrangement of Elements and Numbering of Sheets. The elements of the internationalapplication must be placed in the following order: the request, the description (other than any



sequence listing part thereof), the claim(s), the abstract, the drawings (if any), and, whereapplicable, the sequence listing part of the description. All sheets constituting the internationalapplication must be numbered in consecutive Arabic numerals with the following separateseries of numbering: the first applying to the request only and commencing with the first sheetof the request; the second series commencing with the first sheet of the description (except anysequence listing part thereof) and continuing through the claims until the last sheet of theabstract; if applicable, a third series applying to the sheets of the drawings only; and, ifapplicable, preferably, a further series applying to the sequence listing part of the descriptioncommencing with the first sheet of that part. The numbers must be centered at the top or bottomof the sheet, but not placed in the margin. The number of each sheet of the drawings mustconsist of two Arabic numerals separated by a slant, the first being the sheet number and thesecond being the total number of sheets of drawings (for example, 1/3, 2/3, 3/3); see Rule 11.7and Section 207.

140. Where sheets filed on the international filing date but not numbered as part of theinternational application are intended to be part of the international application, the pages needrenumbering. To that effect the applicant may be invited under Rule 26 to furnish replacementsheets or the receiving Office may renumber the sheets ex officio (paragraphs 161 to 165).

141. Writing of Text Matter. The request, the description, the claims, the abstract and anysequence listing part shall be typed or printed (Rule 11.9 for the request; see also the Notes tothe request form). Handwritten indications (in particular, the marking of check-boxes) in therequest form, that is, not machine printed, are not considered as a defect under Rule 11.9 if theyare legible. Since the request is not published as such, but rather information is extracted from itfor publication on the front page of the pamphlet and the PCT Gazette, text is required only tobe sufficiently legible so as to allow correct data capture.

142. Requirements Concerning Margins. Rule 11.6 prescribes certain minimum requirementsfor the margins of the sheets containing the description, the claims and the abstract. Minornon-compliance with the requirements concerning the left margin (provided that the sheets canbe stapled without impeding the legibility of the text), right margin and bottom margin may bedisregarded but compliance with the requirements concerning the top margin is important.Sheets with letterheads or stamps with names and addresses of applicants or agents may not beused. Text matter originally prepared on a sheet which is reduced by photocopier to meet the A4paper size requirements is only acceptable if the margins and character size on the A4 copycomply with the provisions of Rules 11.6 and 11.9(d).

143. The indication of the applicant’s file reference, if any, on pages of the internationalapplication other than the first sheet of the request, which is sometimes more than 12 charactersin length, causes no problem so far as international publication is concerned, provided that thereference is placed in the left-hand corner of the top margin, within 1.5 cm from the top of thesheet. During the technical preparations for international publication, the top portion of allsheets of the international application is covered by a mask containing the pre-printedinternational publication number (for example, WO 012004/-----123456) (Section 404) andinternational application number. A reference placed as prescribed will be masked and willtherefore not appear in the published international application.

144. Line Numbering Sequence. Rule 11.8(a) strongly recommends that “every fifth line ofeach sheet of the description, and of each sheet of claims” be numbered, the numbers appearingin the right half of the left margin, but that is not a mandatory requirement. If lines are notnumbered or are numbered according to a sequence different from that recommended in



Rule 11.8(a), there is no basis for objection with regard to the requirements of reasonablyuniform international publication (Rule 26.3(a)).

145. Other Physical Requirements Concerning Text. For reasonably uniform internationalpublication, text matter in the description and claims should not be presented in more than onecolumn, and should not be askew (however, text askew by not more than 5 mm is generallyacceptable). The description, claims and abstract may not contain drawings but may containchemical or mathematical formulae and/or tables to the extent provided under Rule 11.10.

146. Drawings and Photographs. Flow sheets and diagrams are considered drawings(Rule 7.1). The Regulations are silent with regard to photographs. Photographs may be filedwhere it is impossible to represent in a drawing what is to be shown. Where photographs aresubmitted, they must be presented on sheets of A4 size, respect the minimum marginsapplicable for drawings and be black and white; they may be submitted as originals. Regardingthe standard to be applied in respect of drawings, including photographs, see Rules 11.10,11.11, 11.13 and also the PCT Applicant’s Guide, Volume I/A, Chapter V.

Abstract

147. The receiving Office checks whether the application contains an abstract as provided forin Article 14(1)(a)(iv) but not whether the abstract complies with Rule 8 (in particular, it is notthe receiving Office’s responsibility to check whether the abstract contains more than 150 wordsin English or when translated into English). If the receiving Office invites (Form PCT/RO/106)the applicant to furnish a missing abstract, it notifies the International Bureau and also theInternational Searching Authority accordingly (Rules 26(1)(b) and 38.1 and paragraph 153). If arequest in PCT-EASY format is filed, together with a computer diskette, with a receiving Officewhich is prepared to accept the filing of the request in that format, the receiving Office alsochecks that the diskette contains a copy of the abstract in electronic form (paragraphs 165Aand 165G).

Appendices

148. The PCT makes no provision for appendices to the international application. Whereappendices or annexes are filed on the international filing date, the receiving Office clarifieswith the applicant whether these sheets are intended to be part of the international application. Ifthe sheets are intended to be part of the application, they should be renumbered so as to complywith Section 207 under a heading which makes their status clear (paragraphs 139 and 140). Asto sheets containing references to deposited biological material and sheets containing nucleotideand/or amino acid sequence listings and/or table(s) relating thereto, see paragraphs 222 to 227.If the sheets are not intended to be part of the application, they are not part of the record copyand should not be sent to the International Bureau (paragraph 294).

Check List

149. Indications Made by the Applicant. The purpose of the check list in Box No. XI of therequest, which should be completed by the applicant, is to allow the receiving Office to verifywhether all sheets intended to constitute the international application and all items toaccompany it were filed. The receiving Office checks whether the applicant has correctlycompleted the check list, failing which it makes the necessary annotations (Rule 3.3, Section313 and paragraphs 150 to 152). The actual number of sheets constituting each element of theinternational application as well as their total on the international filing date should be indicated.Thus, the receiving Office counts the sheets of the record copy (which includes the request but



not the fee calculation sheet) and checks whether the number of sheets of the internationalapplication and the items which accompany it correspond to the indications made by theapplicant in Box No. XI of the request. As regards the request, there must be at least threesheets, namely, the “first sheet,” the “second sheet” and the “last sheet.” As regards anysequence listing part, the number of sheets containing such sequence listingpart must beindicated separately (Rule 3.3(a)(i)). The number of sheets containing only table(s) related tosequence listing must also be indicated separately (Box No. IX of request Form). The languageof filing of the application should be indicated; if it is not, the receiving Office shouldpreferably make the indication ex officio (paragraphs 161 to 165); the applicant shouldsubsequently be invited to indicate the language only if the receiving Office is not in a positionto determine in which language the international application was filed.

150. Annotations by the Receiving Office. If any item which is indicated in the check list asaccompanying the international application has not, in fact, been received at the latest by thetime the record copy is transmitted by the receiving Office, that Office so notes on the check listand the said indication is considered as if it had not been made. Where the check list does notindicate all the items which were in fact filed, the receiving Office completes the check list asprovided for in Rule 3.3(b) and enters, in the margin, the words “COMPLETED BY RO” ortheir equivalent in the language of publication of the international application. Where thereceiving Office completes only some of the indications, it identifies the said words and eachadded indication by an asterisk (Section 313, paragraphs 161 to 165 and Annex B).

151. The receiving Office does not check whether the applicant has indicated any figure of thedrawings which should accompany the abstract. However, where the receiving Office finds aclear indication of that figure either in the text of the international application, for example onthe page of the abstract, or on a separate sheet accompanying the international application, itshould include that indication in Box No. XI of the request.

152. Where sheets filed on the international filing date have been renumbered (paragraphs 139and 140), the total number of sheets indicated in the check list may need to be corrected and thepayment of an additional fee for each sheet in excess of 30 required (paragraphs 241 to 251).The applicant’s attention should be drawn to the fact that the check list has been corrected.

CORRECTIONS OF DEFECTS

Corrections Under Article 14(1)(b) and Rule 26

153. Invitation to Correct. If the receiving Office finds one or more defects underArticle 14(1)(a), it invites (Form PCT/RO/106) the applicant to correct them (Article 14(1)(b),and Rule 26.1). However, the receiving Office does not invite the applicant to provide a missingsignature required under Rule 4.15 if there is more than one applicant and at least one applicanthas signed the request (Rule 26.2bis(a), and Section 316 and paragraph 122), or where therequest is only signed by the agent and the receiving Office has waived the requirement tofurnish a separate power of attorney or of a copy of the general power of attorney. It Thereceiving Office notifies the International Bureau and, if the title of the invention or if theabstract is missing (Rules 37.1 and 38.1), or if the drawings are defective, also the InternationalSearching Authority, by sending a copy of Form PCT/RO/106. The invitation to correct mustfix a time limit for correction which is reasonable under the circumstances; it shall not be lessthan one month from the date of the invitation (Rule 26.2).

154. The receiving Office checks whether the corrections have been timely filed. Since, underRule 26.2, the time limit for correcting defects under Article 14(1) may be extended by the



receiving Office at any time before a decision under Rule 26.5 is taken, any correction receivedafter the expiration of the fixed time limit but before a decision is taken must still be accepted.

155. When fixing a time limit or when granting an extension of a time limit, the receivingOffice takes into account the fact that corrections which may be relevant for the internationalsearch are needed by the International Searching Authority before the establishment of theinternational search report and that all corrections must reach the International Bureau beforecompletion of the technical preparations for international publication. The international searchreport must be established within three months from the receipt of the search copy by theInternational Searching Authority or nine months from the priority date, whichever time limitexpires later (Article 18(1), Rule 42). Regarding technical preparations for internationalpublication, see paragraph 337.

156. Procedure to Correct. A correction which is stated in a letter and not accompanied by areplacement sheet is acceptable if it is of such a nature that it can be transferred from the letterto the record copy without adversely affecting the clarity and direct reproducibility of the sheetonto which the correction is to be transferred (Rule 26.4). Where this sheet is to be published,the corrected sheet must also meet the requirements for reasonably uniform publication.

157. Where the correction cannot be transferred from the letter to the record copy as describedabove, the receiving Office invites the applicant to submit a replacement sheet in compliancewith Rule 26.4.

158. Where the applicant must furnish, under Rule 26.3ter(c), a translation of the request or,under Rule 26.3ter(a), a translation of the abstract or any text matter of the drawings, certainprovisions relating to the correction of defects under Article 14 apply mutatis mutandis(Rule 26.3ter(a) and (c)).

159. Failure to Correct Under Article 14(1)(b) and Rule 26. If the receiving Office finds thatdefects under Article 14(1) have not been corrected or have not been timely corrected, itdeclares the international application withdrawn and notifies (Form PCT/RO/117) the applicant,the International Bureau and (if the search copy has already been transmitted) the InternationalSearching Authority (Rule 29.1(a)(ii) and (iii)). Together with the copy of Form PCT/RO/117sent to the International Bureau, the receiving Office should enclose copies of all papers andcorrespondence relating to the decision declaring that the international application is consideredwithdrawn to facilitate any subsequent review of that decision by a designated Office underArticle 25(1). As to a missing signature of an applicant/inventor for the United States ofAmerica who is unavailable or refuses to sign the international application, see paragraphs 129to 131. In any event, in view of Rule 26.3, the receiving Office should, in general, not declarethe international application withdrawn for failure to comply with the physical requirementsunder Rule 11; only in extreme cases of non-compliance with those requirements should thereceiving Office make such declaration. Where the international application does not contain allthe prescribed indications concerning the applicant (Article 14(1)(a)(ii) and Rules 4.4 and 4.5),the receiving Office should not issue a declaration under Rule 26.5 in a case where, forexample, there is a minor error in an address (see the opening words of Rule 4.4(c)), or wherethe applicant’s full name is misspelled or not indicated, even if the applicant fails to correct thedefect, upon invitation, within the prescribed time limit. If there is more than one applicant, it issufficient that the indications required under Rule 4.5(a)(ii) and (iii) be provided in respect ofone of them who is entitled according to Rule 19.1 to file the international application with thereceiving Office (Rule 26.2bis(b)) (paragraph 84A). Where failure to correct a serious defect isnoticed at a late stage, it would be inappropriate for the receiving Office to declare the



international application withdrawn without first issuing a reminder and extending the time limitunder Rule 26.2.

Correction of Other Formal Defects

160. Where indications required under Rule 4 but not covered by Article 14 (paragraph 73) aremissing or appear to be defective, the receiving Office, where appropriate, brings that fact to theattention of the applicant and invites the applicant to file the required correction.Form PCT/RO/106 or PCT/RO/132, as the case may be, may be used for such purpose. A timelimit for correction may be fixed taking into account the time limit for establishing theinternational search report or the date of international publication of the internationalapplication, depending on the circumstances. However, if the applicant fails to respond to suchinvitation, the receiving Office does not take any action. In the case of the correction ofdeclarations made under Rule 4.17, Form PCT/RO/156 must be used and notForm PCT/RO/106 or PCT/RO/132, see paragraphs 162, 192E and 192F.

Ex Officio Corrections

161. In certain cases, the receiving Office may, instead of inviting the applicant to submit acorrection of a formal defect in the international application, itself correct the defect. Theapplicant is then notified of the correction which will remain unless the applicant objects.

161A. The International Bureau will make the changes listed below during its processing ofthe international application. Ex officio corrections by the receiving Office need not be made to:

– reduce the number of characters of the file reference number to 12 (Section 109);

– delete any indications of titles, such as Esq., Dr., etc.;

– underline to identify the surname of the applicant, inventor and/or agent;

– modify the order of the information given in addresses, such as street before buildingnumber.

162. Defects Which May Be Corrected Ex Officio. Where the request contains matter otherthan that specified in Rules 4.1 to 4.17 or permitted in the Administrative Instructions, thereceiving Office deletes that matter ex officio under Rule 4.18(b). Other specific cases in whichex officio corrections may be made are referred to in the Administrative Instructions, forexample, renumbering of sheets of the international application (Section 311). Ex officiocorrections may also be made where the international application contains an inconsistency or aminor defect with regard to formal requirements (Section 327). Where there is more than onepossibility of correcting a formal defect, the receiving Office should, depending on the case,contact the applicant by telephone and/or in writing to clarify the applicant’s intention beforemaking any ex officio correction. Where the receiving Office has, by mistake, changed ex officioany indication, it must correct the mistake ex officio as soon as it becomes aware of it. If thereceiving Office finds that a check-box in Box No. VIII of the request has been incorrectlymarked, or that the number of declarations has been incorrectly indicated in the right column ofthat Box, the check-box or indication concerned may need to be corrected (paragraph 192B).However, the receiving Office must not make any ex officio corrections to declarations whichare contained in Boxes Nos. VIII (i) to (v) of the request, for example, it must not make anyaddition to, alter, strikethrough or otherwise delete, the text of a declaration (Section 327(d)).



163. Manner of Correcting Defects Ex Officio. The manner of making ex officio correctionsby the receiving Office is referred to in the Administrative Instructions as follows (see alsoAnnex B of these Guidelines):

(i) ex officio corrections of the request (Section 327);

(ii) deletion of additional matter in the request (Rule 4.18(b) and Section 303);

(iii) manner of marking the necessary annotations in the check list (Section 313(b));

(iv) renumbering in the case of deletion, substitution or addition of sheets of theinternational application (Section 311);

(v) cancellation of designations of non-Contracting States (Section 318);

(vi) the indication of dates if it does not comply with Section 110.

163A. Making Ex Officio Corrections in Requests in PCT-EASY Format. The procedure forthe receiving Office to make ex officio corrections in PCT-EASY requests is outlined inChapter 13 (Receiving Office Functions) of the PCT-EASY User Reference Manual.

164. Notification About Ex Officio Correction. The receiving Office notifies(Form PCT/RO/146) the applicant of any ex officio correction. Where an ex officio correctionwas made following clarification obtained from the applicant, for example, on the basis of aletter from the applicant (or by telephone), the receiving Office should indicate that fact in thenotification to the applicant.

165. Form PCT/RO/146 does not give any details about the nature of the ex officio correctionbut merely indicates on which sheet the correction was made by the receiving Office. Therefore,a photocopy of the corrected sheet(s) must be sent together with Form PCT/RO/146 to theapplicant. Copies of that form and of the sheet(s) embodying the correction need to be sent tothe International Bureau and the International Searching Authority only where the sheet(s)involved has (have) already (that is, before the correction was made) been transmitted to thatBureau and that Authority.

CHAPTER VIbisREQUESTS IN PCT-EASY FORMAT

General

165A. Requirements for Requests in PCT-EASY Format. A request may be presented in theform of a computer-generated print-out in PCT-EASY format (Section 102bis). Therequirements are that:

(i) the request is presented as a computer print-out prepared using the PCT-EASYsoftware;

(ii) the request is filed together with a computer diskette, prepared using that software andcontaining a copy in electronic form of the data contained in the request and of the abstract;

(iii) the international application is filed with a receiving Office which is prepared toaccept the filing of international applications containing requests in PCT-EASY format togetherwith PCT-EASY diskettes.



165B. Fee Reduction of International Filing Fee Applicable Where PCT-EASY Software IsUsed. The international fee international filing fee (paragraphs 241 to 249A) is reduced by anamount set out in Item 4 -3 of the Schedule of Fees, which is annexed to the Regulations, if arequest which complies with the requirements of Section 102bis(a) is filed using PCT-EASYsoftware and the receiving Office decides to accept the filing of requests in PCT-EASY format(Section 102bis(c)).

Receiving Office Review of PCT-EASY Requests

165C. Acceptance by Receiving Office of Request in PCT-EASY Format. The questionwhether the receiving Office does, in fact, accept the filing of requests in PCT-EASY format isa matter for that Office. The receiving Office may decide to accept the filing of a request inPCT-EASY format even if it has not already notified the International Bureau that it acceptssuch filings (see Section 102bis(a)). (In such a case, however, the receiving Office should thenpromptly notify the International Bureau accordingly.) Conversely, a receiving Office may, inany particular case, decide not to process PCT-EASY diskettes prepared using the PCT-EASYsoftware, even though that Office has decided to accept the filing of requests in PCT-EASYformat; in such case the receiving Office should proceed as outlined in paragraph 165E.

165D. Non-acceptance by Receiving Office of Request in PCT-EASY Format; Transmittalof International Application Under Rule 19.4(a)(iii). If the receiving Office does not accept thefiling of requests in PCT-EASY format but the request is filed in that format, the internationalapplication does not comply with the requirements of Article 14 (see Rule 3 andSection 102(a)(i)). The receiving Office may invite the applicant to comply with thoserequirements by filing a request corresponding to Form PCT/RO/101, as outlined inparagraph 75. If the reduced international fee international filing fee has been paid, the receivingOffice also notifies the applicant that the conditions for applying the fee reduction related to theuse of PCT-EASY software are not satisfied and invites the applicant to pay the missing amount(Section 304 and, if applicable, Rule 16bis; see paragraphs 258 to 263265).

165E. Alternatively, the receiving Office may seek the authorization of the applicant totransmit the international application to the International Bureau under Rule 19.4(a)(iii), asoutlined in paragraphs 278 to 281. The receiving Office should also seek such authorization inany particular case in which it decides not to process PCT-EASY diskettes prepared using thePCT-EASY software, even though it has decided to accept the filing of requests in PCT-EASYformat (paragraph 165C).

Correction of Defects in PCT-EASY Requests

165F. Checking of Request in PCT-EASY Format. If a request in PCT-EASY format is filedwith a receiving Office which is prepared to accept the filing of that request in that format, thatOffice checks whether the request does indeed appear to be a computer-generated print-outprepared using the PCT-EASY software and is not, for example, a print-out or other paperdocument prepared using word-processing or other software or a typewriter.

165G. The receiving Office also checks whether the request is accompanied by a computerdiskette. If it is, the receiving Office first checks whether that diskette contains any computerviruses before processing it. If the diskette is virus-free, the receiving Office then checks andprocesses the diskette using the features of the PCT-EASY software designed especially forreceiving Office use, as explained in Chapter 13 (Receiving Office Functions) of the PCT-EASYUser Reference Manual. In particular, the receiving Office checks that the diskette has been



prepared using the PCT-EASY software and that it contains both a copy of the data contained inthe request and a copy of the abstract.

165H. The receiving Office also carries out the same checks on the contents of a requestpresented as a computer print-out that are carried out in the case of a request presented onForm PCT/RO/101.

165I. Request Not in PCT-EASY Format Filed with PCT-EASY Diskette. If the internationalapplication contains a request which is not in PCT-EASY format (for example, a requestcorresponding to Form PCT/RO/101) but a PCT-EASY diskette is furnished together with theapplication papers, the receiving Office notifies the applicant that the conditions for applyingthe fee reduction related to the use of PCT-EASY software are not satisfied and invites theapplicant to pay the missing amount (Section 304 and, if applicable, Rule 16bis, seeparagraphs 258 to 263) unless a substitute request in PCT-EASY format is filed immediately(that is before the receiving Office transmits the record copy to the International Bureau).

165J. If a PCT-EASY diskette is filed with a request that is not in the PCT-EASY format anddoes not correspond to Form PCT/RO/101, the receiving Office proceeds as outlined inparagraph 75A. If a PCT-EASY diskette is filed alone, the requirements for according aninternational filing date are not fulfilled and the receiving Office proceeds as outlined inparagraphs 45 to 47. If, in either case, a reduced international fee international filing fee hasbeen paid, the receiving Office notifies the applicant that the conditions for applying the feereduction related to the use of the PCT-EASY software are not satisfied and invites theapplicant to pay the missing amount (Section 304 and, if applicable, Rule 16bis, seeparagraphs 258 to 263265).

165K. Correction of Request in PCT-EASY Format. The receiving Office invites(Form PCT/RO/106) the applicant to correct any defects in a request in PCT-EASY formatwithin a time limit fixed in the invitation. A correction which is stated in a letter and is notaccompanied by a replacement print-out of the entire request prepared using the PCT-EASYsoftware is acceptable if it is of such a nature that the correction can be transferred ex officio bythe receiving Office onto the request part of the record copy without affecting the clarity anddirect reproducibility of the sheet on to which the correction is to be transferred (Rule 26.4).Otherwise, the applicant should be required to submit a replacement print-out of the entirerequest, or, as the case may be, one or more replacement sheets embodying the correction in theform of a print-out, prepared using the PCT-EASY software, accompanied by a letter drawingattention to the differences between the replaced print-out and the replacement print-out(Rule 26.4). A replacement diskette is not required, and, if it is furnished, it will not beprocessed.

165L. Request in PCT-EASY Format Filed Without PCT-EASY Diskette. If the PCT-EASYdiskette is not filed with the request in PCT-EASY format, the receiving Office informs theapplicant that the request does not comply with the requirements of Section 102bis(a) andinvites the applicant (Form PCT/RO/106) to comply with those requirements, either by filingthe required diskette immediately (that is before the receiving Office transmits the record copyto the International Bureau), or by filing a request corresponding to Form PCT/RO/101 (seeparagraph 75A). Where a reduced international fee international filing fee has been paid, thereceiving Office also notifies the applicant that the conditions for applying the fee reductionrelated to the use of PCT-EASY software are not satisfied and invites the applicant to pay themissing amount (Section 304 and, if applicable, Rule 16bis, see paragraphs 258 to 263265)unless such required diskette is filed immediately (that is before the receiving Office transmitsthe record copy to the International Bureau).



165M. PCT-EASY Diskette Is Defective or Incomplete. If the receiving Office finds that adiskette purporting to be a PCT-EASY diskette contains no data (for example, the diskette isblank) or incomplete data (for example, the text of the abstract is missing), or is unreadable (forexample, it is found to contain a computer virus), it proceeds as though the request inPCT-EASY format had been filed without a PCT-EASY diskette (see paragraph 165L).

CHAPTER VIIPRIORITY CLAIMS AND PRIORITY DOCUMENTS

Requirements for Priority Claims

166. If the request contains (Box No. VI of the request form) a priority claim, the receivingOffice checks whether the priority claim is valid, as outlined below.

(a) The earlier application must have been filed either in or for a country which is partyto the Paris Convention for the Protection of Industrial Property (“Paris Convention”), or in orfor any Member of the World Trade Organization that is not party to the Paris Convention(Article 8(1) and Rule 4.10).5

(b) The priority claim must contain the following indications (Rule 4.10):

(i) if the earlier application is a national application:

– the date on which the earlier application was filed;

– the number of the earlier application;

– the country in which the earlier application was filed;

(ii) if the earlier application is a regional application:

– the date on which the earlier application was filed;

– the number of the earlier application;

– the authority entrusted with the granting of regional patents under theapplicable regional patent treaty (in practice, the regional Officeconcerned); and,

– in the case (and only in the case) where the regional Office concerned isARIPO (whose membership is not restricted to countries party to the ParisConvention) at least one country party to the Paris Convention for whichthe earlier application was filed;

5 Rule 4.10(a) and (b) as amended with effect from January 1, 2000, does not apply in respect of theEuropean Patent Office as this Office has informed the International Bureau of incompatibility of Rule4.10(a) and (b) with the national law applied by that Office, as provided by paragraph (d) of that Rule.Paragraphs (a) and (b) as in force until December 31, 1999, continue to apply after that date in respect ofthat Office for as long as those paragraphs as amended continue not to be compatible with the applicablenational law. Information received by the International Bureau concerning any such incompatibility ispublished in the Gazette.



(iii) if the earlier application is an international application:

– the international filing date;

– the international application number;

– the receiving Office with which it was filed (in practice, this is indicated bythe two-letter code which is part of the international application number).

(c) In addition, where the earlier application is a regional application (other than anARIPO application, in which case the last sub-item of item (b)(ii) applies) or an internationalapplication, the applicant may, if desired, indicate one or more countries party to the ParisConvention, or one or more Members of the World Trade Organization, for which that earlierapplication was filed (Rule 4.10(b)(i)). Such optional indication must be made in the space atthe bottom of Box No. VI of the request.

(d) The date on which the earlier application was filed must be a date falling within theperiod of 12 months preceding the international filing date. It should be noted thatArticle 4C(3) of the Paris Convention provides that if the last day of the priority period is anofficial holiday or a day when the Office is not open for the filing of applications, the periodmay shall be extended until the next working day of the Office.

Requirements Not Fulfilled167. Invitation to Correct. Where the receiving Office finds that any priority claim does notcomply with the requirements of Rule 4.10 (paragraph 166), or that any indication in a priorityclaim is not the same as the corresponding indication appearing in the priority document, thereceiving Office invites (Form PCT/RO/110) the applicant to correct the priority claimconcerned and sends a copy of the invitation to the International Bureau.

168. Where, in the case of a regional or international application, the indication of the Officeof filing is missing or inconsistent with the corresponding indication on the priority document,that indication may be made or corrected ex officio if the receiving Office or the InternationalBureau possesses sufficient information, for example from the priority document, to make suchindication or correction. The same applies where, in the case of a national application, theindication of the country in which the earlier application was filed is missing or inconsistentwith the corresponding indication on the priority document.

169. Time Limit for Correction. A priority claim may be corrected within a time limit of16 months from the priority date or, where the correction would cause a change in the prioritydate, 16 months from the priority date as so changed, whichever 16-month period expires first,provided that such notice may, in any event, be submitted until the expiration of four monthsfrom the international filing date (Rule 26bis.1(a)).

170. Correction by Applicant. Upon receipt of a response to the invitation to correct a priorityclaim, the receiving Office checks whether the indications furnished by the applicant have beenreceived within the time limit provided for in Rule 26bis.1(a) and comply with Rule 4.10. In theaffirmative, and unless the applicant has submitted a substitute sheet (paragraphs 208 to 212),the receiving Office enters the correct indication in the request, encloses within square bracketsany previously made indication, draws a line through it while still leaving it legible, and enters,in the margin, the letters “RO” (Section 314(a)). The receiving Office notifies(Form PCT/RO/111) the applicant accordingly and sends to the International Bureau and theInternational Searching Authority, respectively, a copy of that notification and a copy of thecorresponding sheet of the request containing the corrections.



171. Failure to Correct. If, in response to an invitation to correct a priority claim, the applicantdoes not, before the expiration of the time limit under Rule 26bis.1(a), submit a noticecorrecting the priority claim so as to comply with the requirements of Rule 4.10, that priorityclaim is, for the purposes of the procedure under the Treaty, considered not to have been madeand the receiving Office so declares (Form PCT/RO/111). However, a priority claim is not to beconsidered not to have been made only because the indication of the number of the earlierapplication is missing or merely because an indication in the priority claim is not the same asthe corresponding indication appearing in the priority document; in such cases, the internationalapplication proceeds with the priority claim as indicated by the applicant (Rule 26bis.2(b)).

172. Where the receiving Office declares that a priority claim is considered not to have beenmade, it encloses the priority claim concerned within square brackets, draws a line between thesquare brackets, while still leaving legible the indications concerned and enters in the margin,the words “NOT TO BE CONSIDERED FOR PCT PROCEDURE (RO)” or their equivalent inthe language of publication of the international application (Section 302). The receiving Officenotifies (Form PCT/RO/111) the applicant accordingly and sends to the International Bureauand the International Searching Authority, respectively, a copy of that notification and a copy ofthe corresponding sheet of the request containing the marking.

Correction or Addition of Priority Claim on the Applicant’s Own Initiative

173. A priority claim may be corrected or added on the applicant’s own initiative by a noticesubmitted to the receiving Office or the International Bureau within the time limit provided forunder Rule 26bis.1(a); the correction of a priority claim made by the applicant may include theaddition of any indication referred to in Rule 4.10 (Rule 26bis.1(a)).

174. Where the applicant furnishes such indications to the receiving Office, that Office entersthem in the space provided therefor in the request and, as to markings in the margin, it proceedsas outlined in paragraph 170.

175. Where the priority claim, as corrected or added, does not comply with the requirements ofRule 4.10 and the time limit for correction (Rule 26bis.1(a)) has not yet expired, the receivingOffice invites the applicant to correct the (remaining) defect(s).

176. Where, after the expiration of the time limit under Rule 26bis.1(a), a priority claim stilldoes not comply with the requirements under Rule 4.10, it is, for the purposes of the PCTprocedure, considered not to have been made (Rule 26bis.2) and the receiving Office proceedsas set out in Rule 26bis.2(b), Section 302 and paragraph 172, provided that correctionsfurnished by the applicant after the expiration of that time limit, but before the receiving Officemakes the declaration under Rule 26bis.2(b), are considered to have been received before theexpiration of that time limit. Where the applicant furnishes information concerning a priorityclaim to be added after the expiration of that time limit, the receiving Office declares(Form PCT/RO/111) the priority claim to be considered not to have been made for the purposesof the PCT procedure, and regarding the notifications it proceeds as outlined in paragraph 172.

177. Corrections and/or additions received by the receiving Office after expiration of the timelimit provided for under Rule 26bis.1(a) and after the receiving Office has made the declarationunder Rule 26bis.2(b) are not to be taken into account.

178. Where the receiving Office has declared that a priority claim is, for the purposes of thePCT procedure, considered not to have been made (Rule 26bis.2), the receiving Office shoulddraw the applicant’s attention to the possibility of requesting the International Bureau, prior to



the completion of the technical preparations for international publication and subject to thepayment of a special fee, to publish together with the international application informationconcerning the priority claim which was considered not to have been made (Rule 26bis.2(c)).

Transmittal to the International Bureau of a Priority Document Furnished by theApplicant

179. Where the priority of an earlier national, regional or international application is claimed, acopy of that earlier application, certified by the authority (that is, a national or regional Officewith which it was filed or, in the case of an earlier international application, the receiving Officewith which that earlier international application was filed) (“the priority document”) must,unless already filed with the receiving Office together with the international application inwhich the priority claim is made, be submitted by the applicant to the International Bureau or tothe receiving Office within the time limit provided for in Rule 17.1(a).

180. Upon receipt of a priority document, the receiving Office indelibly marks theinternational application number and the date of receipt on the document in the top right cornerof the first sheet.

181. The receiving Office checks whether the indications in the request relating to the priorityclaim correspond to the indications on that document. In the affirmative, the receiving Officepromptly transmits the priority document to the International Bureau with a notification(Form PCT/RO/135) of the date of receipt (Section 323(a)). It does not check whether thepriority document has been received within the time limit of 16 months from the priority dateprovided for in Rule 17.1(a).

182. Where indications given in the request relating to the priority claim and the correspondingindications on the priority document are inconsistent or incomplete, the receiving Office invites(Form PCT/RO/110) the applicant to correct or furnish the indication(s) concerned and drawsthe applicant’s attention to the time limit under Rule 26bis.1 (paragraphs 167 to 172). Ittransmits the priority document with a copy of that invitation to the International Bureau. Whereindications given in the request are incomplete (for example, the number of the priorityapplication is missing), and the receiving Office possesses sufficient information concerning themissing indications (for example, from the priority document) it may make the indication exofficio before transmitting the priority document to the International Bureau. For notificationsconcerning that ex officio correction, see paragraph 170.

Certification of an Earlier Application and Transmittal to the International Bureau

183. Where the earlier (national, regional or international) application was filed with the sameOffice that acts as receiving Office and the priority document is therefore to be issued by thatOffice, the applicant may, instead of obtaining the priority document from that Office andsubmitting it subsequently to that same Office or the International Bureau, request that Office asreceiving Office to prepare the priority document and transmit it directly to the InternationalBureau. Such request (“request for priority document”) may be subjected by the receivingOffice to the payment of a fee (Rule 17.1(b)). The request for priority document may be madeon the request form by marking the appropriate check-boxes in Box No. VI, or by making arequest to that effect on any other paper, such as a letter accompanying the internationalapplication or on the fee calculation sheet. The latter contains a space for including the amountof the fee concerned.



184. Where a request for priority document has been made on any sheet other than the requestform and the record copy has not yet been transmitted, the receiving Office marks ex officio(paragraphs 161 to 165) the corresponding check-boxes in Box No. VI of the request form.

185. Where a request for priority document was not made on the date on which theinternational application was filed but was received on a later date, prior to the expiration of 16months from the priority date, the receiving Office notifies (Section 323(c) andForm PCT/RO/135) the International Bureau of that fact. On that form, the receiving Officemarks the corresponding check-box and date of receipt of the request for priority document.

186. Where, prior to the expiration of 16 months from the priority date, a request for prioritydocument has been made (paragraphs 183 to 185), and any required fee has been paid, thereceiving Office promptly prepares and transmits that document together withForm PCT/RO/135 to the International Bureau (Section 323(b) and (c)). It marks theinternational application number indelibly in the top right corner of the first sheet.

187. Where the request for priority document has been received by the receiving Office priorto the expiration of 16 months from the priority date but the required fee has not been paid, thereceiving Office promptly notifies (Form PCT/RO/128) the applicant that that request will beconsidered not to have been made unless the fee is paid within 16 months from the priority dateor, in the case referred to in Article 23(2), not later than at the time the processing orexamination of the international application is requested (Section 323(b)) and invites theapplicant to pay the unpaid fee.

188. Where, after the expiration of 16 months from the priority date, no fee has been paid, thereceiving Office promptly notifies (Form PCT/RO/128) the applicant that the request forpriority document is considered not to have been made. A copy of that notification is sent to theInternational Bureau (Section 323(b) and (d)). Where that fee has not been paid but thereceiving Office fails to inform the International Bureau, within 17 months from the prioritydate, that the request is considered not to have been made, the receiving Office must prepare andtransmit the priority document to the International Bureau even though the fee has not been paid(Section 323(b) and (d)).

189. Where the receiving Office receives a request for priority document later than 16 monthsfrom the priority date, or where such request has been considered not to have been made(Section 323(b)), the receiving Office promptly notifies (Form PCT/RO/128) the applicantaccordingly, drawing attention to the requirements of Rule 17.1(a) (Section 323(e)).

190. If, however, after the expiration of 16 months from the priority date, the applicant paysthe fee and no notification has yet been sent to the International Bureau, the receiving Officemay, upon request of the applicant, nevertheless prepare and transmit the priority document. Ifthe priority document reaches the International Bureau before the date of internationalpublication of the international application, it will be considered to have been received by theInternational Bureau on the last day of the 16-month time limit provided for under Rule 17.1(a).

191. Where a request for priority document has not been validly made because the earlierapplication was not filed with the receiving Office, the receiving Office ex officio deletes thecorresponding mark in the check-box in Box No. VI and should promptly notify notifies(Form PCT/RO/132) the applicant accordingly (Form PCT/RO/146); the receiving Office mayexplain the reasons for this correction using Form PCT/RO/132a copy of the notification shouldbe sent to the International Bureau.



Effect of a Change of Priority Date

192. Where the priority date of the international application has changed following a correctionor addition of a priority claim under Rule 26bis, any date which is computed from the originalpriority date and which has not already expired is computed from the priority date resultingfrom that change, but time limits computed from the original priority date and which havealready expired are not reinstated (Rule 26bis.1(c)).

CHAPTER VIIbisDECLARATIONS RELATING TO NATIONAL REQUIREMENTS

Requirements for Declarations

192A. The applicant may include in Box No. VIII of the request one or more of the followingdeclarations concerning:

(i) declaration as to the identity of the inventor (Box No. VIII (i)) (Rule 4.17(i) andSections 211 and 212(b));

(ii) declaration as to the applicant’s entitlement, as at the international filing date, to applyfor and be granted a patent (Box No. VIII (ii)) (Rule 4.17(ii) and Section 212);

(iii) declaration as to the applicant’s entitlement, as at the international filing date, to claimpriority of the earlier application (Box No. VIII (iii)) (Rule 4.17(iii) and Section 213);

(iv) declaration as to inventorship (only for the purposes of the United States of America)(Box No. VIII (iv)) (Rule 4.17(iv) and Section 214(a));

(v) declaration as to non-prejudicial disclosures or exceptions to lack of novelty(Box No. VIII (v)) (Rule 4.17(v) and Section 215).

192B. The receiving Office examines the check-boxes in Box No. VIII for reference todeclarations and checks whether any declarations indicated in those check-boxes are included inBox No. VIII (i) to (v) and any Continuation of Box No. VIII (i) to (v). If the receiving Officefinds that a check-box in Box No. VIII of the request has been incorrectly marked, or that thenumber of declarations referred to in Rule 4.17 has been incorrectly indicated in the rightcolumn of that Box, the check-box or indication concerned may need to be corrected.

192C. Where the request contains one or more declarations referred to in Rule 4.17, thereceiving Office may check (Rule 26ter.2(a)) that:

(i) each declaration is worded as prescribed by Sections 211 to 215, as applicable, andindicates the designated States to which it applies (as explained in the Notes to the requestform). The standardized wording of the declaration of inventorship which is applicable only forthe purpose of the designation of the United States of America is pre-printed in BoxNo. VIII (iv) since no part of that wording may be omitted by the applicant;

(ii) any declaration of inventorship in Box No. VIII (iv) is signed anddated directly by the inventor for the United States of America unless that



inventor himself has signed the request—a signature by an appointed agentis not sufficient for that purpose.

The receiving Office carries out no further checks on any declarations contained in the requestform. In particular, it does not check that the name(s) and address(es) of the person(s) making adeclaration correspond to the name(s) and address(es) of the applicant(s) or inventor(s)indicated in Boxes Nos. II and III of the request form. It also does not check that the State(s) forthe purposes of which State a given declaration is made under Rule 4.17. are designated underRule 4.9(a) in Box No. V.

REQUIREMENTS NOT FULFILLED

192D. Where the receiving Office finds that any declaration does not comply with one or moreof the requirements referred to in paragraph 192C, the receiving Office may invite(Form PCT/RO/156) the applicant to correct the declaration concerned (Rule 26ter.2(a)). It alsosends a copy of the invitation to the International Bureau. The receiving Office must not makeany ex officio corrections to declarations referred to Rule 4.17 which are contained in therequest, for example, it must not make any addition to, alter, strikethrough or otherwise delete,the text of a declaration (Section 327(d)).

CORRECTION OR ADDITION OF DECLARATIONS

192E. The applicant may only correct a declaration, or add a declaration to the request, bysubmitting a notice to the International Bureau within a time limit of 16 months from thepriority date, provided that any notice which is received by the International Bureau after theexpiration of that time limit shall be considered to have been received on the last day of thattime limit if it reaches it before the technical preparations for international publication havebeen completed (Rule 26ter.1). This applies whether the correction or addition is on theapplicant’s own initiative or in response to an invitation to correct issued by the receiving Officeor the International Bureau under Rule 26ter.2(a).

192F. Where a notice under Rule 26ter.1 is submitted to the receiving Office, the receivingOffice indelibly marks the date of receipt on it and transmits it promptly to the InternationalBureau (Section 317). The receiving Office does not check whether the notice was submittedwithin the time limit under Rule 26ter.1 or whether it complies with the requirements ofSections 211 to 216.

CHAPTER VIIIDRAWINGS NOT INCLUDED IN THE INTERNATIONAL APPLICATION;

OTHER LATER SUBMITTED SHEETS

DRAWINGS

Reference to Drawings in the International Application

193. The receiving Office examines the check list in the request and the text of theinternational application for reference to drawings (including flow sheets and diagrams(Rule 7.1)) and checks whether drawings are included.

194. If the receiving Office finds a reference to drawings and those drawings are not includedor not all drawings referred to are included in the international application, it indicates that fact



(Rule 26.6(a)) on the last sheet of the request, in the right-hand side of the box “for receivingOffice use only” by marking the check-box relating to the non-receipt of drawings. That check-box must only be marked where a reference to drawings is made and any of the drawingsreferred to is missing. Where that check-box is marked, the receiving Office indicates in thatsame box, under the marked check-box, which sheet(s) or figure(s) has (have) not beenreceived. The check list (Box No. IX of the request) may need to be corrected (paragraphs 149,150 and 161 to 165). If the record copy and the search copy have already been transmitted, thereceiving Office sends a copy of that last sheet to the International Bureau and the InternationalSearching Authority.

Notification of Applicant

195. The receiving Office notifies (Form PCT/RO/107) the applicant under Article 14(2) thatdrawings referred to in the text of the international application are not included, that theapplicant may furnish the drawings within 30 days from the date of receipt of the internationalapplication and that, if the applicant furnishes the missing drawings within that time limit, theinternational filing date will be the date on which the drawings are received. Otherwise, anyreference to the said drawings will be considered non-existent.

196. Where the time limit for responding to the notification expires later than one year fromthe filing date of the earliest application whose priority is claimed, the receiving Office drawsthe applicant’s attention to the fact that any drawing which is submitted in reply to thenotification after a period of one year from the (earliest) priority date, even if submitted withinthe time limit under Article 14(2) and Rule 20.2(iii), will result in the priority claim beingconsidered, for the purposes of the PCT procedure, not to have been made (paragraphs 166(d)and 202). Form PCT/RO/107 contains a check-box for that purpose.

Later Receipt of Drawings

197. Where the receiving Office receives drawings in response to a notification underArticle 14(2), they are included in the international application if they are submitted within30 days from the date on which the papers referring to the missing drawings were received(Rule 20.2(iii)). The procedure to be applied in the case of later submitted drawings underArticle 14(2) and Rule 20.2(a)(iii) is outlined in detail in Sections 309 and 310. In theright-hand side of the box “for receiving Office use only,” the receiving Office deletes themarking of the check-box relating to the non-receipt of drawings and marks the check-boxrelating to the receipt of drawings. The earlier marking should remain legible.Form PCT/RO/126 is used to notify the applicant of the receipt of the later submitted drawingsand of the correction of the international filing date.

198. If it appears, after clarification with the applicant, that a reference in the text of theinternational application to a missing drawing is the result of a clerical error (for example, itappears that no drawing is in fact missing and the reference was intended to be a reference to adrawing which is in fact included in the international application), the applicant’s attentionshould be directed to the fact that a request for rectification of an obvious error may besubmitted by the applicant directly to the International Searching Authority under Rule 91.

Procedure Where No Drawings Are Received in Response to the Notification

199. Where a notification has been issued as outlined in paragraph 195 and no drawings aresubmitted, any reference to the said drawings is considered non-existent (Article 14(2)) and nofurther action is required from the receiving Office.



SHEETS COMPLETING THE INTERNATIONAL APPLICATION OTHER THANDRAWINGS

Sheets Completing the Purported International Application Before an International FilingDate Has Been Accorded

200. The receiving Office may receive:

(i) sheets completing a purported international application in response to aninvitation under Article 11(2), that is, where that purported application did not, on the date onwhich it was first received, fulfill the requirements for according an international filing date,

(ii) other sheets pertaining to a purported international application submitted on adate later than the date on which papers were first received, even though there has been noinvitation under Article 11(2) and the papers as originally filed may have fulfilled therequirements for being accorded an international filing date (which, however, has not yet beenaccorded by the receiving Office).

201. Time Limit. Sheets submitted in response to an invitation under Article 11(2) must bereceived within the time limit fixed by the receiving Office under Rule 20.6 in that invitation(Rule 20.2(a)(ii)). Other sheets, if they are to be included in the international application mustbe received within 30 days of the date on which the papers relating to the internationalapplication were first received (Rule 20.2(a)(i)).

202. Date of Receipt. Where sheets are timely received, the date of receipt of the purportedinternational application is the date on which those sheets are received; the receiving Officecorrects the date of receipt marked on the last sheet of the request accordingly, still leavinglegible the earlier date (Section 309(a) and (b)). It notifies (Form PCT/RO/126) the applicantaccordingly.

203. Where the sheets are not received within the above-mentioned time limits, the receivingOffice proceeds as outlined in detail in Section 309(c).

Sheets Completing the International Application After an International Filing Date HasBeen Accorded

204. Time Limit. After according an international filing date, the receiving Office may receivesheets completing the international application. Such later filed sheets are included in theinternational application if they are submitted within 30 days from the date on which sheetswere first received (Rule 20.2(a)(i)).

205. Date of Receipt. The date on which the papers completing the international applicationare received becomes the international filing date. The receiving Office corrects the date ofreceipt and the international filing date, still leaving legible the earlier dates. The procedure tobe applied by the receiving Office in the case of later submitted sheets under Rule 20.2(a)(i)completing the international application is outlined in Section 309.

206. Where the date of receipt of the later submitted sheets is later than 30 days from the dateof first receipt of papers, the later submitted sheets are not taken into account for the purposes ofinternational processing. The date of receipt of the application and the international filing dateremain those accorded earlier. Form PCT/RO/126 is used to notify the applicant.

Later Receipt of Abstract



207. The receiving Office may receive a sheet containing a missing abstract. The late receipt ofthe abstract does not affect the date of receipt of the international application and consequentlydoes not affect the international filing date (Rule 20.2(a)(iv)).

SUBSTITUTE SHEETS UNDER RULE 26 AND OTHER REPLACEMENT SHEETS

Substitute Sheets Under Rule 26

208. Where sheets containing corrections of formal defects are submitted to the receivingOffice under Rule 26.4, the receiving Office checks whether:

(i) the defects have been corrected;

(ii) the contents of the proposed replacement sheet are identical with those of thesheet to be replaced; in case of doubt as to the identity of text matter or drawings contained inthe proposed sheet with the relevant part of the international application other than the request,the proposed replacement sheet should be submitted to the competent International SearchingAuthority for authorization of rectification of an obvious error under Rule 91.1; if replacementsheets filed by the applicant result in a change in the total number of sheets of the internationalapplication, the numbers of sheets indicated upon filing in Box No. IX of the request (check list)need not be changed; if the applicant files a replacement sheet for the last sheet of the requestcontaining corrected numbers of sheets, such sheet should not be inserted into the internationalapplication;

(iii) the corrections have been filed within the time limit under Rule 26.2(paragraphs 153 to 155) and in time to be included for publication of the internationalapplication, provided that any corrections received after the expiration of the time limit (andeventually even after international publication) but before a decision under Rule 26.5 is taken bythe receiving Office must still be accepted (paragraph 154) (in such a case, the internationalapplication will be republished).

209. If the above requirements are fulfilled, the procedure set out in Section 325(a) applies.Substitute sheets under Rule 26 may also be submitted on the applicant’s own initiative.

Other Replacement Sheets

210. For the receipt of sheets containing corrections of defects under Article 3(4)(i) regardingthe admitted language for elements other than the description and claims, see Rule 26.3ter.

211. If replacement sheets are submitted under Rule 9 (Expressions, Etc., Not to Be Used), seeSection 325(c).

Replacement Sheets of the Request Submitted Together with Request for Recording ofChange

212. In the case where the applicant submits a replacement sheet of the request together with arequest for the recording of a change (in the request) under Rule 92bis, the receiving Officeshould mark in the upper right-hand corner of the replacement sheet the internationalapplication number and the date on which it was received and in the middle of the bottommargin the words “SUBSTITUTE SHEET” or “SUBSTITUTE SHEET (RULE 92bis)”. Forfurther details, see paragraphs 309 to 312.

Rectified Sheets



213. For rectified sheets in connection with rectifications of obvious errors under Rule 91, seeparagraphs 218 to 221 and 302 to 308.

Procedure in the Case of Correction of Defects Under Rule 9, 26 or 91.1

214. The procedure to be applied in case of correction of defects under Rule 26.4, rectificationof obvious errors under Rule 91.1 and correction under Rule 9.2 is set out in detail inSection 325.

215. Where renumbering of sheets is necessary due to deletion, substitution or addition ofsheets of the international application, the procedure to apply is described in detail inSection 311.

216. A copy of any replaced sheet is kept in the home copy together with a copy of any letteraccompanying the replacement sheet or containing a correction or rectification(Section 325(a)(iv)).

Replacement Sheet Containing Correction Under Rule 26 and Rectification of ObviousError Under Rule 91.1

217. If the receiving Office receives a sheet in response to an invitation to correct formaldefects under Rule 26 and notices a discrepancy between the proposed replacement sheet andthe sheet to be replaced, it proceeds as outlined in the following paragraphs.

218. If the discrepancy is in the request, the receiving Office may, after having obtainedconfirmation from the applicant, consider the proposed replacement sheet as constituting also arequest for the rectification of an obvious error under Rule 91.1(e)(i). Where the receivingOffice authorizes such rectification and that sheet complies with the formal requirements, thereceiving Office marks that sheet “RECTIFIED SHEET (RULE 91.1)”; it notifies the applicant(Form PCT/RO/109) of the authorization of the rectification and sends a copy of thatnotification to the International Bureau and the International Searching Authority(Section 325(a)).

219. Where such discrepancy is on a sheet of any part of the international application otherthan the request, the receiving Office invites the applicant to submit to it a new sheet containingonly the corrections of the formal defects concerned; it draws the applicant’s attention to thepossibility of submitting to the International Searching Authority a request for rectification ofany obvious error which may be contained in the original sheet (paragraphs 302 to 308). In anyevent, the receiving Office does not insert a copy of that sheet into the home copy and does notsend that sheet to the International Bureau.

220. Where, following the invitation of the receiving Office, the applicant submits a requestfor rectification of an obvious error, and the International Searching Authority authorizes therectification and sends to the receiving Office a copy of the sheet concerned marked“RECTIFIED SHEET (RULE 91.1)”, the receiving Office inserts that sheet into the home copy.

221. The procedure outlined in the preceding paragraphs also applies where the applicantsubmits a replacement sheet containing both a correction of a formal defect under Rule 26 andalso a rectification of an obvious error, together with a request for rectification of the obviouserror concerned.



CHAPTER IXNUCLEOTIDE AND/OR AMINO ACID SEQUENCE LISTINGS AND/OR

TABLE(S) RELATINGED THERETO

General

222. The receiving Office examines the check list in Box No. IX(b) and (c) of the request forreference to any nucleotide and/or amino acid sequence listings and/or table(s) filed in computerreadable form only or filed in computer readable form in addition to being filed on paper(Section 801(a)(i) or (ii)) and checks whether such sequence listings and/or table(s) haves beenfiled as part of the description (that is not for the purposes of international search under Rule13ter only). It also checks that the type and number of carriers on which the sequence listingand/or table(s) part areis contained is as indicated in paragraph (b) of the check list. It alsochecks that the copies indicated in items 9(i) and (ii) and 10(i) and (ii), and any statement as toidentity indicated in items 9(iii) and 10(iii), accompany the international application. If there isany inconsistency, the check list may need to be corrected. The receiving Office does not checkfor compliance of any sequence listings and/or table(s), filed in computer readable form and/orin paper form as part of the description, with the prescribed requirements set out in the standardcontained in Annex C or technical requirements contained in Annex C-bis and Section 802 ofthe Administrative Instructions since that check is made by the International SearchingAuthority (Rule 13ter). Consequently, the receiving Office does not check the language of thesequence listing, nor does it check compliance with the requirements as to presentation of thesequence listing in paper form and/or in any computer readable form; in particular, it does notcheck whether the sequence listing complies with Rule 5.2 and the above-mentioned standard.However, the receiving Office must check the sheets containing the sequence listing and/ortable(s) part of the description to a limited extent, for example, in relation to the compliancewith the physical requirements necessary for the purpose of a reasonably uniform internationalpublication as required by paragraph 3 of the said Annex C; the receiving Office must alsocheck the appropriate marking in the check list in the request. In addition, the receiving Officemust check that the correct basic international filing fee has been paid (paragraph 241A).

222A. The receiving Office transmits to the International Searching Authority any sequencelisting and/or table(s) relating thereto furnished to it in computer readable form (whether or notforming part of the international application) (Rule 23.1(c) and Section 313(c)) and anysequence listing and/or table(s) in printed form furnished to it subsequent to the filing of theinternational application (Section 313(c)) as outlined in paragraph 290).

Sheets Containing Sequence Listings

223. Sheets of a sequence listing included in the international application must be presented asa separate part (“sequence listing part”) of the description and should preferably be sequentiallynumbered in a series separate from those used in numbering the sheets of the request (firstseries), the sheets of the description, claims and abstract (second series), and any sheets ofdrawings (third series) (Section 207 and paragraph 139). For the purposes of the check list inBox No. IX of the request form, the receiving Office checks whether the number of sheets ofsuch sequence listing is indicated separately in the check list (Rule 3.3(a)(i)). If that number isnot indicated, the receiving Office includes it ex officio (paragraphs 161 to 165).

224. If the applicant furnishes on the same date, with the international application but separatelyfrom the international application, sheets containing a sequence listings and/or table(s), thereceiving Office, if in doubt, clarifies with the applicant whether those sheets are intended toform part of the international application. If the applicant so confirms, the receiving Officecorrects the check list ex officio and invites the applicant to pay any required fee for sheets in



excess of the previously calculated total number of sheets. Form PCT/RO/102 or PCT/RO/133,as the case may be, is used for that purpose (paragraphs 252 to 265).

Sheets Not Numbered or Incorrectly Numbered

225. If sheets containing a sequence listings are not numbered or are incorrectly numbered, thereceiving Office may either renumber them ex officio or invite the applicant under Rule 26 to doso by submitting replacement sheets (Rule 26.4 and paragraphs 153 to 159). Where sheets arerenumbered, the total number of sheets indicated in the check list may need to be corrected andthe receiving Office invites the applicant to pay any required additional fee for sheets in excessof the previously calculated total number of sheets (paragraphs 241 and 252 to 263265).

Sequence Listings and/or Table(s) on an Electronic Medium in Computer Readable Form

226. Where a a sequence listings and/or table(s) part of the description on an electronic mediumin computer readable form areis filed with a receiving Office which has notified theInternational Bureau under Section 801(b) that it is prepared to accept such filings, thatreceiving Office checks that the electronic medium is an electronic medium specified by thereceiving Office under that Section. Where the sequence listings and/or table(s) part isare filedin computer readable form but not on an electronic medium specified by the receiving Officeunder Section 801(b), that Office invites the applicant, under Article 14(1)(a)(v) as outlined inparagraphs 153 to 159, to furnish to it a replacement sequence listings and/or table(s) part on anelectronic medium it has specified (Section 801(d)).

226A. Where a a sequence listings and/or table(s) part of the description areis filed in computerreadable form with a receiving Office which has not notified the International Bureau underSection 801(b) that it is prepared to accept such filings, that Office may, nevertheless, decide inthe particular case to accept such filing in computer readable form (Section 801(c)). However,where the receiving Office is not prepared to accept such filing in computer readable form, itpromptly requests the International Bureau as receiving Office to agree, in accordance with theprocedure outlined in paragraphs 278 to 281, to the transmittal of the international applicationunder Section 333(b) and (c) (Section 801(e)).

226B. Where the receiving Office accepts the filing of a a sequence listings and/or table(s) partof the description on an electronic medium in computer readable form under Section 801(a)(i)or (ii), the receiving Office indelibly marks the international application number on each copyof the electronic medium and transmits one copy to the International Searching Authoritytogether with the search copy. Where the search copy has already been sent, the receivingOffice promptly transmits the sequence listings and/or table(s) part of the description on anelectronic medium to the International Searching Authority (Rule 23.1(c) and Section 313(c)).Further details regarding the preparation, identification and transmittal of internationalapplications containing sequence listings and/or table(s) are outlined in paragraphs 284B to284E.

226C. Where the receiving Office receives a a sequence listings and/or table(s) part on anelectronic medium in computer readable form, it indelibly marks the international applicationnumber on the copy of the electronic medium and transmits it to the International SearchingAuthority together with the search copy. Where the search copy has already been sent, thereceiving Office promptly transmits the sequence listings and/or table(s) part to the InternationalSearching Authority (Rule 23.1(c) and Section 313(c)). No copy of any such sequence listingsshould be kept by the receiving Office except where no international filing date is accorded(paragraph 50).



Subsequently Furnished Sequence Listings and/or Table(s) in Paper Form

227. Sheets containing a sequence listings and/or table(s) which are furnished after the filing ofthe international application would not normally be intended to form part of the internationalapplication. However, where the applicant indicates to the receiving Office that those sheets areintended to form part of the international application, for example, in response to an invitationfor clarification whether the papers were erroneously omitted from the papers constituting theinternational application, the procedure for receipt, on different days, of papers constituting theinternational application applies (Rule 20.2 and paragraphs 200 to 206). In other cases, theapplicant may have erroneously submitted to the receiving Office corrected sheets intended forthe International Searching Authority (Rule 13ter.1). In such case, the receiving Office shouldeither send those sheets promptly to that Authority and inform the applicant accordingly (seeparagraph 290) or inform the applicant that those sheets should be sent by the applicant directlyto the International Searching Authority.

CHAPTER XREFERENCES TO DEPOSITED MICROORGANISMS OR

OTHER BIOLOGICAL MATERIAL

General

228. Where the international application relates to deposited microorganisms or otherbiological material, it is not the responsibility of the receiving Office to check whetherindications containing references to such deposited microorganisms or other biological materialmust be made in the application itself or in relation to it. However, where such references havebeen furnished, the receiving Office checks them to the extent outlined below and, in certaincases, invites the applicant to correct them or draws the applicant’s attention to certaincircumstances.

References to Deposited Microorganisms or Other Biological Material as Part of theDescription

229. The national law of certain States requires that references to deposited microorganisms orother biological material furnished under Rule 13bis.3(a) be included in the description (PCTApplicant’s Guide, Volume I/B, Annex L). Where such a State is designated and Whereindications are presented on a separate sheet such as Form PCT/RO/134 (which may beprepared using the PCT-EASY software), the applicant should number that sheet must benumbered as a sheet of the description (preferably at the end of the description within thesecond series referred to in Section 207). In such a case, the check-box in Box No. IX of therequest referring to separate indications relating to deposited microorganisms or other biologicalmaterial should not be marked. Where references to deposited microorganisms or otherbiological material are made on a separate sheet, that sheet shall preferably be furnishedtogether with the request and referred to in the check list (Section 209(a)).

230. Where sheets containing references to deposited microorganisms or other biologicalmaterial, as defined in Rule 13bis, are filed on the same date as the international application butseparately from the description, that is, not numbered as part of the international application (forexample, on Form PCT/RO/134), the receiving Office may draw the applicant’s attention to thefact that the national law of certain States requires that the indications concerned be included inthe description.



231. If the applicant confirms that those sheets are intended to be part of the description theyshould be inserted at the end of the description and renumbered in accordance with Section 207.The receiving Office may renumber those sheets ex officio or invite (Form PCT/RO/106) theapplicant to correct the defect (paragraphs 153 to 165). The total number of pages indicated inthe check list may need to be corrected and the payment of an additional fee for sheets in excessof 30 may be required (paragraphs 235 to 273). The receiving Office, where appropriate, drawsthe applicant’s attention to such circumstance.

232. If, in any of the situations described above, the applicant does not respond to the receivingOffice communication, the processing of the international application nevertheless continuesand no further action on this matter is required from the receiving Office.

233. Any separate sheet containing references to deposited microorganisms or other biologicalmaterial received by the receiving Office after transmittal of the record copy to the InternationalBureau must be promptly transmitted to that Bureau so that it reaches it preferably before thetechnical preparations for international publication have been completed (Rule 13bis.4(d)).

Requirements as to the Language of Sheets Containing References to Deposited Micro-organisms or Other Biological Material

234. Sheets containing references to deposited microorganisms or other biological materialmust, if they are part of the description, be in the same language as that description. This is arequirement for being accorded an international filing date (Article 11(1)(ii) and paragraph 41).If the receiving Office notices that such sheets are not in such language, it promptly notifies theapplicant (Form PCT/RO/103) that no international filing date may be accorded because thelanguage requirement is not fulfilled.

CHAPTER XIFEES

General

235. The receiving Office checks whether the fees due under Article 3(4)(iv) have been paid. Ifthe applicant has submitted the Fee calculation sheet (Annex to the request), the receivingOffice uses that sheet to check whether the applicable amounts of those fees have been indicatedby the applicant; it marks the column reserved for that purpose on the right-hand side of thatsheet. The fees to be collected by the receiving Office include, in every case:

(i) the transmittal fee (Box T of the Fee calculation sheet), to which the receivingOffice is entitled under Rule 14 for performing the tasks which it must perform in connectionwith the international application in its capacity as receiving Office;

(ii) the international filing fee, collected under Rule 15 for the benefit of theInternational Bureau, consisting of the basic fee (Box BI of the Fee calculation sheet) anddesignation fees (Box D of the Fee calculation sheet); and

(iii) the search fee (Box S of the Fee calculation sheet), collected under Rule 16 forthe benefit of the International Searching Authority.

236. Other fees which may be payable to the receiving Office, where applicable, include thefee for preparation of additional copies of the international application (Rule 21.1(c),



Section 305bis and paragraphs 283 and 284), the fee for preparation and transmittal of prioritydocuments (Rule 17.1), the late payment fee (Rule 16bis), the fees for late furnishing of atranslation of the international application (Rules 12.3(e) or 12.4(e), respectively, andparagraphs 69 or 69A, respectively), and the fee for transmittal of a purported internationalapplication to the International Bureau as receiving Office (Rule 19.4 and paragraphs 275and 281), and the fee for the confirmation of a precautionary designation (Rule 15.5).

Amounts, Prescribed Currencies and Reductions of Certain Fees

The Transmittal Fee

237. The amount of the transmittal fee, if any, is fixed by the receiving Office and payable inthe currency or currencies prescribed by it. The receiving Office also fixes any conditions forreduction of that fee.

The Search Fee

238. The amount of the search fee is fixed by the International Searching Authority which iscompetent to carry out the international search. For the competent International SearchingAuthority, see paragraphs 114 and 115. For the amounts fixed by the various InternationalSearching Authorities and the currencies in which they may be paid, see Annex D of the PCTApplicant’s Guide, Volume I/B.

239. Some International Searching Authorities grant reductions of the search fee; for details,see the PCT Applicant’s Guide, Volume I/B, Annex D.

240. The search fee is payable in the currency or one of the currencies prescribed by thereceiving Office (“receiving Office currency”). The amounts of the search fee in thosecurrencies are established as set out in Rule 16.1(b) and notified by the International Bureau toeach receiving Office prescribing payment in that receiving Office currency.

The International Filing Fee

241. The International Filing Basic Fee. The amount of the basic international filing fee is setout (in Swiss francs) in the Schedule of Fees, which is annexed to the Regulations, and ispayable in the currency or one of the currencies prescribed by the receiving Office. The amountof the basic international filing fee depends on the total number of sheets of the internationalapplication at the time of filing, which appears under “Total number of sheets” in Box No. IX(check list) of the request. If the international application contains more than 30 sheets, asupplement to the basic international filing fee must be paid for each sheet in excess of 30(Rules 15.1 and 96 and Schedule of Fees). This supplement is also due for the sheet containingthe abstract, even where such abstract is missing at the time of filing the internationalapplication.

241A. Where the sequence listing and/or table(s) relating theretopart of an internationalapplication areis filed on an electronic medium in computer readable form, as provided underSection 801(a), the basic international filing fee comprises (Section 803) the following twocomponents:

(i) a basic component calculated as provided in the Schedule of Fees in respect of allpages filed on paper; (that is, (a) all pages of the request, (b) description, (excluding, if filedboth also filed on paper and in electronic form, the sequence listing and/or all the pages whichexclusively contain tables related to a sequence listing (and if such tables are grouped at the



very end of the description) part if also filed on paper), (c) claims, (d) abstract and (e) drawings)(see item 3(b1i1) and (b2i2) of the Fee calculation sheet), and

(ii) an additional component for the sequence listing and/or table(s) part only,corresponding to 400 times the fee per sheet as referred to in item 1(b) of the Schedule of Fees,regardless of the actual length of the sequence listing and/or table(s) part filed in computerreadable form and regardless of the fact that the sequence listing and/or table(s) part may havebeen filed on paper in addition to computer readable form (see item 3(b3i3) of the Feecalculation sheet)(provided that such tables are grouped at the very end of the description).

242. [Deleted]The Designation Fee. The amount of the designation fee is also set out (inSwiss francs) in the Schedule of Fees annexed to the Regulations (Rules 15.2 and 96 andSchedule of Fees) and is payable in the currency or one of the currencies prescribed by thereceiving Office.

243. [Deleted]Subject to what is set out in paragraph 246, the number of designation feespayable corresponds to the number of national patents and regional patents sought underRule 4.9(a), that is, the number of check-boxes marked in Box No. V of the request relating tothe designation of States. Only one designation fee is due for the designation “AP”, thedesignation “EA”, the designation “EP” or the designation “OA”, irrespective of the number ofStates for which an ARIPO patent, a Eurasian patent, a European patent or an OAPI patent,respectively, is sought.

244. [Deleted]Where any State is designated twice (once for the purposes of a regional patentand once for the purposes of national protection), the applicant must pay one designation fee inrespect of the regional patent and a further designation fee in respect of the designation fornational protection (Rule 15.1(ii) and Section 210).

245. [Deleted]Where in respect of a given designation, where the national law so permits, theapplicant seeks two kinds of protection (Article 44), only one designation fee is due for thatdesignation (Rule 15.1); that is the case, for example, where both a patent and a utility modelare sought in respect of the designation of Germany.

246. [Deleted]Maximum Number of Designation Fees Payable. Item 2(a) of the Schedule ofFees prescribes the maximum number of designation fees that are payable. Any designationmade under Rule 4.9(a) in excess of that maximum number does not require the payment of adesignation fee. If, for example, the maximum number of designation fees payable is five (as isthe case as from 1 January 2002) and the application contains 19 designations, the figure to beindicated in Box D of the Fee calculation sheet is five times the amount of the designation fee.

246A. Reduction of International Filing Fee Where the Request Is Filed Using PCT-EASYSoftware. The international filing fee is reduced by an amount set out in item 43(a) of theSchedule of Fees, which is annexed to the Regulations, if a request which complies with therequirements of Section 102bis(a) is filed using PCT-EASY software and the receiving Officedecides to accept the filing of requests in PCT-EASY format (Section 102bis(c); see alsoparagraphs 165A and 165B).

247. Reduction of International Filing Fee for Applicants from Certain States. An applicantwho is a natural person and who is a national of and resides in a State whose per capita nationalincome is below 3,000 US dollars (according to the average per capita national income figuresused by the United Nations for determining its scale of assessments for the contributionspayable for the years 1995, 1996 and 1997), or an applicant, whether a natural person or not,



who is a national of and resides in a State that is classed as a least developed country by theUnited Nations is entitled, in accordance with the Schedule of Fees, to a reduction of 75% ofcertain PCT fees including the international filing fee. A list of Information about the PCTContracting States whose nationals and residents are entitled to such reduction is set out in theNotes to the Fee calculation sheet contained in the PCT Applicant's Guide, Volume I/B, AnnexC. If there are several applicants, each must satisfy the above-mentioned criteria. The reductionof the international filing fee applies automatically to any international application whoseapplicant or applicants are so entitled on the basis of the indications of name, nationality andresidence given in Boxes Nos. II and III of the request. No specific request for such reductionneed to be made by the applicants concerned.

248. The fee reduction is available even if one or more of the applicants are not fromContracting States, provided that each of them is a national and resident of a State that meets theabove-mentioned criteria and that at least one of the applicants is a national or resident of aContracting State and thus is entitled to file an international application. For the ContractingStates whose nationals and residents are eligible, see the Notes to the fee calculation sheet thePCT Applicant's Guide, Volume I/B, Annex C. For States which are not Contracting States, thereceiving Office should contact the International Bureau.

249. Where the applicant is, or all applicants are, as the case may be, entitled to the reductionof the international filing fee, the amount payable (Box I of the Fee calculation sheet) is 25% ofthe sum of the amounts of the basic fee and the designation fees international filing fee(Boxes IB and D of the Fee calculation sheet).

249A. The reduction of the international filing fee for applicants from certain States iscalculated on the basis of the amount of the international filing fee payable after any separatereduction related to the use of the PCT-EASY software (see paragraph 246A).

250. [Deleted]Fees for Confirmation of Precautionary Designations. For confirmation underRule 4.9(c) of any designations made under Rule 4.9(b), see paragraphs 296 to 301. Suchconfirmation is subject to the payment to the receiving Office of as many designation fees asthere are national patents and regional patents sought by the applicant by virtue of theconfirmation, together with a confirmation fee. The designation fees are collected by thereceiving Office for the benefit of the International Bureau. The confirmation fee is for thebenefit of the receiving Office. It is equal to 50% of the sum of the designation fees payable fordesignations confirmed.

251. [Deleted]Such fees are payable in respect of each designation so confirmed, even if themaximum number of designation fees referred to in item 2(a) of the Schedule of Fees is alreadypayable or if a designation fee is already payable in respect of the designation under Rule 4.9(a)of the same State for a different purpose (Rule 15.5). Rule 16bis does not apply.

Time Limits for Payment

252. The receiving Office checks whether the fees due under Article 3(4)(iv) have been paidwithin the prescribed time limit.

253. The transmittal fee, the basic international filing fee and the search fee are payable withinone month from the date of receipt of the international application by the receiving Office. Theamount payable is the amount applicable on that date of receipt (Rules 14.1(c), 15.4(a)and 16.1(f)).



254. [Deleted]The designation fees must be paid within a time limit of one year from thepriority date, or one month from the date of receipt of the international application if that one-month period expires later than one year from the priority date. Where the time limit of one yearfrom the priority date expires later than one month from the date of receipt of the internationalapplication, the applicant may indicate, by marking the corresponding check-box in the Feecalculation sheet, his/her intention to delay the payment of the designation fees (Rule 15.4(b)).

255. [Deleted]Where the designation fees are paid within one month from the date of receipt ofthe international application, the amount payable is the amount applicable on that date ofreceipt. Where the time limit of one year applies and the designation fees are paid before theexpiration of that one year but after the expiration of one month from the date of receipt of theinternational application, the amount payable is the amount applicable on the date of payment(Rule 15.4(c)).

255A. [Deleted]The amended maximum number (for example, five, as from 1 January 2002)applies to international applications filed on or after the date of entry into force of theamendment (for example, 1 January 2002). In the case of international applications filed beforethat date:

(i) the amended maximum number (for example, five) applies where thedesignation fees are paid on or after that date (for example, 1 January 2002), and where the timelimit under Rule 15.4(b)(i) applies and the designation fees are paid later than one month fromthe date of receipt of the application but within one year from the priority date (see Rule 15.4(c),second sentence);

(ii) the previously applicable maximum number (six, in the example used above)applies where the designation fees are paid within one month from the date of receipt of theapplication, irrespective of whether they are paid before, on or after the date of entry into forceof the amendment (that is, 1 January 2002, in the case of the example used above) (seeRule 15.4(c), first sentence).

256. [Deleted]The fees for confirmation of precautionary designations are payable within atime limit of 15 months from the priority date (Rule 4.9(b)(ii) and (c)).

257. Regarding the fee for preparing and transmitting a priority document to the InternationalBureau, see Rule 17.1(b).

Notification Concerning Payment of Fees Before the Date on Which They Are Due

258. The receiving Office, upon receipt of a (purported) international application, checkswhether any payment of fees has been made and notifies the applicant accordingly (payment ofall, or only part of, the prescribed fees or overpayment to be refunded). Where no or insufficientfees have been paid, the receiving Office may invite (Form PCT/RO/102) the applicant to paythe balance due within the applicable time limit(s) (Section 304(a) and (b)).

Invitation to Pay Fees After the Date on Which They Are Due

259. Where the receiving Office finds that, by the time they are due under Rules 14.1(b),15.4(a) and 16.1(f), no fees were paid, or the amount paid is not sufficient to cover thetransmittal fee, the basic international filing fee and the search fee, it invites(Form PCT/RO/133) the applicant to pay the amount required to cover those fees within one



month from the date of the invitation and sends to the International Bureau a copy of thatinvitation (Rule 16bis.1(a)).

260. [Deleted]Where, by the time they are due under Rule 15.4(b), the payment made is notsufficient to cover the designation fees due for all the designations made under Rule 4.9(a), thereceiving Office invites (Form PCT/RO/133) the applicant to pay the amount required to coverthose fees within one month from the date of the invitation and sends to the InternationalBureau a copy of that invitation (Rule 16bis.1(b)).

261. [Deleted]Where the receiving Office is required to issue invitations to pay the designationfees as well as the transmittal, the basic and the search fees after the date on which they are due,and the designation fees are due later than those other fees, the invitations may be issuedseparately and may each contain the invitation to pay a late payment fee. Where the due datesfor the fees concerned are less than 15 days apart, those invitations should preferably be issuedas a single invitation (Section 320(a)).

262. Where the receiving Office issues an invitation under Rule 16bis.1(a) and (b) to pay feesafter the date on which they are due and it has received moneys from the applicant before thedue date, it informs the applicant to which fees those moneys have been applied(Section 320(c)). For the application to fees due of moneys received, see Section 321 andparagraph 266. Form PCT/RO/133 is used for that purpose.

263. Any payment received by the receiving Office before the invitation (Form PCT/RO/133)is issued must be considered as having been received before the expiration of the applicabletime limit. In other words, if the payment received covers the total amount due, no invitationshould be sent and no late payment fee should be required; if the payment received covers onlypart of the total amount due, an invitation should be sent in respect of the recalculated missingamount and a late payment fee calculated on that missing amount may be required.

264. Late Payment Fee. When inviting (Form PCT/RO/133) the applicant to pay fees after thedate on which they are due, the receiving Office may (but is not obliged to) require the applicantto pay a late payment fee. The amount of the late payment fee depends on the amount of theunpaid fees indicated in the invitation to pay: it is 50% of the unpaid amount, subject tominimum and maximum amounts. The minimum is equal to the transmittal fee and applieswhere the unpaid amount of fees is less than the amount of the transmittal fee; the maximum isequal to the basic 50% of the international filing fee corresponding to 30 sheets (even if theinternational application contains more than 30 sheets) (Rule 16bis.2, and Schedule of Fees andSection 320(b)).

265. The invitation procedure (under Rule 16bis) described above does not apply to any otherfee payable to the receiving Office, in particular, not to the designation and confirmation feesdue for confirming precautionary designations (Rules 4.9(b) and (c)) or to the fee due forpreparing and transmitting a priority document to the International Bureau.

Application of Moneys Received

266. If the applicant has failed to pay to the receiving Office under Rule 16bis what is neededto cover all the designations made under Rule 4.9(a) and, where required, the late payment fee,tThe receiving Office applies the moneys received according to the instructions received fromthe applicant as outlined in Section 321 (and Rule 16bis.1(c)). Where the moneys received bythe receiving Office are not sufficient to cover the fees due, and the receiving Office has notreceived instructions from the applicant as to the fees to which it shall apply the moneys, the



receiving Office shall, apply the moneys received in payment, successively, of the fees in thefollowing order and to the extent that they are due and unpaid:(i) the transmittal fee;(ii) the international filing fee;(iii) where applicable, the late payment fee;(iv) the search fee.The order in which moneys received are applied so as to cover the transmittal, search and basicfee may not be chosen by the applicant. However, if the applicant has made express indicationsof the order in which moneys should be applied to designation fees (either in the request itself orlater, in connection with the payment of designation fees), the receiving Office must followsuch indications. The receiving Office declares any designation not covered by the amount paid(Section 321(d)) withdrawn and notifies (Form PCT/RO/116) the applicant accordingly, with acopy to the International Bureau (Rules 16bis.1(c) and 29.1(b)).

Failure to Pay the Prescribed Fees Under Article 14(3)

267. If the applicant has failed to pay to the receiving Office the amount required underRule 16bis or has paid less than what is needed to cover the transmittal fee, the basicinternational filing fee, where required, the late payment fee, and the search fee, one designationfee and, where required, the late payment fee, the receiving Office declares the internationalapplication withdrawn under Article 14(3) and notifies the applicant using Form PCT/RO/117.It sends a copy of that notification to the International Bureau and, where the search copy hasalready been transmitted, to the International Searching Authority (Rules 16bis.1(c)and 29.1(a)). Although the search copy is not forwarded to the International SearchingAuthority until the search fee has been paid (Rule 23.1(a) and (b)), situations may arise wherethe search fee was paid at the time of filing but the designation fees were not due and not paidwithin one year from the priority date. In such a situation the search copy would have beenforwarded but the international application would be withdrawn because of failure to pay anydesignation fees.

Refund of Fees

268. The receiving Office refunds (Form PCT/RO/119) to the applicant, in compliance withRule 15.6, any amount paid to cover the international filing fee:

(i) if the determination under Article 11(1) is negative (and, therefore, aninternational filing date cannot be accorded);

(ii) if the international application is withdrawn or considered withdrawn before therecord copy has been transmitted to the International Bureau; or

(iii) if, due to prescriptions concerning national security, the internationalapplication is not treated as such.

269. The receiving Office refunds (Form PCT/RO/119) to the applicant, in compliance withRule 16.2, any amount paid to cover the search fee:

(i) if the determination under Article 11(1) is negative (and, therefore, aninternational filing date cannot be accorded);

(ii) if the international application is withdrawn or considered withdrawn before thesearch copy has been transmitted to the International Searching Authority (Section 326(c)); or

(iii) if, due to prescriptions concerning national security, the internationalapplication is not treated as such.



270. The receiving Office may, before making a refund of the search fee under Rule 16.2, firstinvite the applicant to submit a request for the refund (Section 322).

271. For refund of the transmittal fee by a non-competent receiving Office, see paragraph 276.

Transfer of Fees

272. The receiving Office should, each month, transfer to the International Bureau and theInternational Searching Authority, respectively, moneys received as international filing fees(basic and designation fees) (Rules 15.2(a) and 15.5) and search fees (Rule 16.1(b)) during thepreceding month. The receiving Office keeps for its own benefit any moneys received astransmittal fees (Rule 14), and late payment fees (Rule 16bis.2) and confirmation fees(Rule 15.5).

273. When transferring the international filing fees, the receiving Office should, by letter,facsimile transmission or in computer readable form, communicate to the International Bureauthe following information: the international application number, the name of the applicant (thatis, the applicant first named in the request), the amount of the basic fee, any supplement to thebasic fee, the designation fee, and the total amount of the international filing fee. An indicationwhether the designation fee is paid for a designation under Rule 4.9(a) or for a confirmation of adesignation under Rule 4.9(c) is not required. As an example of a table containing theindications mentioned above, see Annex A to these Guidelines.

CHAPTER XIITRANSMITTAL OF INTERNATIONAL APPLICATION

TO INTERNATIONAL BUREAU AS RECEIVING OFFICE (RULE 19.4)

Transmittal of International Application for Reasons of Nationality and Residence of theApplicant or Language of the Application (Rule 19.4(a)(i) and (ii))

274. Where a purported international application is filed by an applicant who is a national orresident of a Contracting State with a national Office which acts as a receiving Office under theTreaty, but

(i) that national Office is not competent for reasons of nationality or residence ofthe applicant to receive that purported international application (Rule 19.1or 19.2), or

(ii) the purported international application is not in a language accepted underRule 12.1(a) by that national Office but is in a language accepted under thatRule by the International Bureau as receiving Office (see Annex C (IB) of thePCT Applicant’s Guide, Volume I/B, for the language accepted by that Bureau),

the national Office applies the procedure outlined in Rule 19.4(b).

275. The national Office does not check any further whether the purported internationalapplication fulfills the requirements for being accorded an international filing date. Where thenational Office requires payment of the fee referred to in Rule 19.4(b) and that fee has notalready been paid, the national Office promptly invites (Form PCT/RO/151) the applicant to paythat fee within a time limit of 15 days from the date of the invitation (Section 333(a)). Thenational Office is not obliged to wait for the fee to be paid to transmit the purportedinternational application. However, if the required fee is not paid, the national Office need not



transmit the purported international application but should proceed under Rule 20.7 by notifyingthe applicant that the purported international application does not comply with Article 11(1) andis not and will not be treated as an international application.

276. Any fees already paid by the applicant are to be refunded except for the amount necessaryto cover any fee required under Rule 19.4(b). The transmittal fee, the international filing fee(basic and designation fee) and the search fee are payable to the International Bureau asreceiving Office in a currency prescribed by it (paragraphs 237 to 242). For the purposes ofcalculation of the time limit(s) for payment of those fees, the date of receipt of the internationalapplication is considered to be the date on which it is actually received by the InternationalBureau as receiving Office (Rule 19.4(c)).

277. Where payment of a fee is not required or where the applicant has paid any required fee,the purported international application is to be transmitted to the International Bureau asreceiving Office, unless prescriptions concerning national security prevent the purportedinternational application from being so transmitted (Rule 19.4(b) and Section 333(a) and (c)).The national Office notifies (Form PCT/RO/151) the applicant about the transmittal of thepurported international application and transmits it to the International Bureau as receivingOffice together with a copy of the notification sent to the applicant, the date of receipt of thepurported international application at the national Office being marked on the last sheet of therequest in the space provided for that purpose (paragraph 35). The purported internationalapplication so transmitted is considered to have been received by that Office on behalf of theInternational Bureau as receiving Office under Rule 19.1(a)(iii) on the date of receipt of theinternational application by that national Office.

Transmittal of International Application for Other Reasons (Rule 19.4(a)(iii))

278. Where a purported international application is filed with a national Office which acts as areceiving Office under the Treaty, that national Office and the International Bureau may agree,for any reason other than those specified under Rule 19.4(a)(i) and (ii), and with theauthorization of the applicant, that the purported international application is to be transmitted tothe International Bureau as receiving Office under Rule 19.4(b).

279. Where a national Office intends to proceed under Rule 19.4(b), having regard toRule 19.4(a)(iii), it promptly requests the International Bureau as receiving Office to agree tothe transmittal of the purported international application. Where, upon request from the Office,the International Bureau agrees to the proposed transmittal, and unless the proposed transmittalhas already been authorized by the applicant, the national Office promptly invites the applicantto submit to that Office, within a time limit of 15 days from the date of the invitation, anauthorization for the proposed transmittal (Section 333(b)). Where the International Bureau asreceiving Office agrees to, and the applicant authorizes, the proposed transmittal, the procedureoutlined in paragraphs 275 to 277 applies. Form PCT/RO/152 is used for those purposes.

280. Where the International Bureau as receiving Office does not agree to, or where theapplicant does not authorize, the proposed transmittal under Rule 19.4(a)(iii), or where theauthorization of the applicant is not received within the time limit, the national Office does nottransmit the purported international application to the International Bureau as receiving Officebut processes the purported international application itself.

281. Where a national Office which is competent to receive the international applicationintends to proceed under Rule 19.4(b), having regard to Rule 19.4(a)(iii), that national Officeshould preferably not subject the transmittal of the purported international application to the



payment of a fee. If, however, the receiving Office does charge such a fee and the applicantdoes not pay that fee, the receiving Office proceeds, with regard to the unpaid fees, as outlinedin paragraph 275, and, in the case of non-payment, processes the purported internationalapplication itself.

Request for Priority Document

282. Rule 17.1(b), concerning preparation and transmittal to the International Bureau of apriority document upon request of the applicant, does not apply where a purported internationalapplication is transmitted under Rule 19.4.

CHAPTER XIIIRECORD COPY, SEARCH COPY AND HOME COPY

Preparation of Record Copy, Search Copy and Home Copy

General

283. Where the international application and documents referred to in the check list(Rule 3.3(a)(ii)) are required to be filed in more than one copy and the receiving Office has notreceived the number of copies required, the receiving Office prepares the required additionalcopies (Rules 11.1 and 21.1). Where a translation is furnished for the purposes of internationalsearch under Rule 12.3, the search copy consists of the request and the translation(Rule 23.1(b)). The procedure for preparation, identification and transmittal of the copies of theinternational application is outlined in detail in Sections 305 (for the international application asfiled) and 305bis (for any required translation).

284. Where the receiving Office has prepared any additional copies required underArticle 12(1), it is entitled to charge a fee for performing that task (Rule 21.1(c) andSection 305bis). However, in most receiving Offices that fee is regarded as covered by thetransmittal fee and no extra fee is charged for the preparation of additional copies. The receivingOffice may use Form PCT/RO/120 to invite the applicant to pay that fee where that fee isrequired to be paid.

284A. Requests in PCT-EASY Format. Where the request is presented in PCT-EASY format(paragraph 165A), the receiving Office prepares additional copies of the computer print-out ofthat request as part of any additional copies of the international application that it is responsiblefor preparing under Rule 21.1, as outlined in paragraphs 283 and 284.

284B. International Applications Containing a Sequence Listings and/or Table(s) inComputer Readable Form. Where the sequence listings and/or table(s) part of the description isare filed only in computer readable form under Section 801(a)(i), the record copy consists ofthose elements of the international application filed on paper together with the sequence listingsand/or table(s) part filed in computer readable form (Section 804(a)). Where the sequencelistings and/or table(s) part of the description isare filed both in computer readable form and inwritten form under Section 801(a)(ii), the record copy consists of all the elements of theapplication filed on paper, including the sequence listings and/or table(s) part in written form(Section 804(b)).



284C. Where the sequence listings and/or table(s) part of the description isare filed underSection 801(a)(i) or (ii) in less than the number of copies required for the purposes of Section804 (see paragraphs 284D and 284E), the receiving Office either:

(i) promptly prepares any additional copies required, in which case it may fix a fee forperforming that task and collect such fee from the applicant; or

(ii) invites the applicant to promptly furnish the additional number of copies required,accompanied by a statement that the sequence listings and/or table(s) part in computer readableform contained in those copies areis identical to the sequence listing and/or table(s) part incomputer readable form as filed.

However, where the sequence listings and/or table(s) part of the description isare also filed inwritten form under Section 801(a)(ii), the receiving Office may not require the applicant to fileadditional copies of the sequence listings and/or table(s) part in written form (Section 804(c)).

284D. Where the sequence listings and/or table(s) part of the description isare filed both incomputer readable form and in written form, the receiving Office marks the words “RECORDCOPY—SEQUENCE LISTINGS AND/OR TABLE(S) PART” (or the equivalent of thosewords in the language of publication of the international application) in the upper left-handcorner of the first page of the first sequence listing partand of the first page of the first table inwritten form (Section 804(e)(i) and (f)) and transmits that part of the record copy to theInternational Bureau together with the other paper parts of the record copy (see paragraphs 283and 284B).

284E. Where the sequence listings and/or table(s) part of the description is are filed only on anelectronic medium in computer readable form, the receiving Office marks the words “RECORDCOPY—SEQUENCE LISTINGS AND/OR TABLE(S) PART” on the original electronicmedium containing the sequence listings and/or table(s) part in computer readable form andtransmits that part of the record copy to the International Bureau together with the paper part ofthe record copy (Section 804(d)(i)).

Where the sequence listings and/or table(s) part of the international application areis filed bothin computer readable form and in written form, the receiving Office marks the words “COPYFOR INTERNATIONAL BUREAU—SEQUENCE LISTINGS AND/OR TABLE(S) PART”on one copy of the electronic medium containing the sequence listings and/or table(s) part incomputer readable form and transmits that copy with the record copy (Section 8014(e)(i)). Inaddition, in both cases, the receiving Office:

(i) marks the words “SEARCH COPY—SEQUENCE LISTINGS AND/ORTABLE(S) PART” on one additional copy of the electronic medium containing the sequencelistings and/or table(s) part in computer readable form and transmits that part of the search copyto the International Searching Authority, together with the paper part of the search copy(Section 804(d)(ii) and (e)(ii));

(ii) marks the words “HOME COPY—SEQUENCE LISTINGS AND/ORTABLE(S) PART” on the other such copy of the electronic medium containing the sequencelistings and/or table(s) part in computer readable form and keeps that part of the home copy inits files together with the paper part of the home copy (Section 804(d)(iii) and (e)(iii)).



The receiving Office may, when marking the copies referred to above, use, instead of the wordsreferred to, the equivalent of those words in the language of publication of the internationalapplication (Section 804(f)).

Transmittal to the International Bureau of the Record Copy of the InternationalApplication and Other Items

285. Items to Accompany the Record Copy. Items which should accompany the record copyare listed in Section 313(a). Form PCT/RO/118 is used to transmit the record copy and items toaccompany it (paragraph 22). A copy of any required power of attorney should always betransmitted. Where an international application has been received by facsimile transmission anda confirmation copy has been received subsequently, both the facsimile copy (which is therecord copy) and the confirmation copy are transmitted to the International Bureau(Section 331). Where a translation of the international application is furnished under Rule 12.3or 12.4, that translation is transmitted together with the record copy (that is, the internationalapplication in the original language) (Section 305bis). A statement explaining the lack ofsignature of an inventor/applicant furnished under Rule 4.15(b) and accompanied by acommunication to the effect that it satisfies the receiving Office must also be transmitted. Thetransmittal of the record copy must also be effected if the international application is consideredwithdrawn by the receiving Office or has been withdrawn by the applicant, in which case thenotice effecting withdrawal must also be transmitted (paragraphs 314 to 324).

285A. Where the request is in PCT-EASY format (paragraph 165A), the receiving Officetransmits the computer print-out of the request, as part of the record copy, together with thePCT-EASY diskette. The receiving Office should not transmit a copy of the PCT-EASYcomputer diskette, or a copy of any replacement PCT-EASY computer diskette, filed by theapplicant.

286. Time Limit for Transmittal of the Record Copy. The receiving Office transmits therecord copy and the items listed in Section 313(a) to the International Bureau promptly afteraccording an international filing date. Unless any necessary national security clearance has notbeen obtained (paragraphs 32 to 34), the receiving Office must transmit the record copy in timefor it to reach the International Bureau by the expiration of the 13th month from the prioritydate; if the transmittal is effected by mail, the receiving Office must mail the record copy notlater than five days prior to the expiration of the 13th month from the priority date(Rule 22.1(a), last sentence).

287. Failure to Transmit the Record Copy. Where the record copy has not been received bythe International Bureau within 14 months from the priority date and the applicant requests thereceiving Office to furnish a certified copy of the international application, Rule 22.1(c) to (f)applies.

Transmittal to the International Searching Authority of the Search Copy and Other Items

General

288. If the search fee has been paid, the receiving Office transmits (Form PCT/RO/118) thesearch copy to the International Searching Authority (Rule 23.1(a) and (b)). The search copy isnot to be transmitted if the international application is withdrawn by the applicant or isconsidered withdrawn by the receiving Office.



289. Where a translation of the international application is furnished under Rule 12.3, thattranslation, together with a copy of the request, is considered to be the search copy underArticle 12(1) (Rule 23.1(b) and Section 305bis(a)(iii)). In such case, no copy of the internationalapplication in the original language is to be transmitted to the International Searching Authority.

290. Items to Accompany the Search Copy. Together with the search copy, the receiving Officetransmits any sequence listing in computer readable form (Rule 23.1(c)) or any sequence listingin printed form not forming part of the international application (Section 313(c)) and/or anytable(s) related to a sequence listings (whether in computer readable form or in paper form), anydocument concerning the deposit of biological material, any document concerning an earliersearch, and a copy of any required power of attorney.

291. Time Limit for Transmittal. The transmittal must be effected at the latest on the same dayas the record copy is transmitted to the International Bureau (Rule 23.1(a)) or, where atranslation of the international application is furnished under Rule 12.3, promptly after receiptof that translation, unless no search fee has been paid.

292. Failure to Pay the Search Fee; Delayed Transmittal of the Search Copy. Where thesearch fee has not been paid in whole or in part at the time when the record copy is transmitted,the receiving Office does not transmit the search copy until the search fee has been fully paid. Insuch case, the receiving Office transmits the search copy promptly after payment of the searchfee (Rule 23.1(a) and (b)). Where transmittal of the search copy is delayed, the receiving Officemay inform (Form PCT/RO/102) the applicant. The receiving Office notifies the InternationalBureau about that fact by marking the check-box provided for this purpose on the last page ofthe request (Section 306).

293. If the search copy has been transmitted to the International Searching Authority althoughthe search fee has not been paid, the receiving Office promptly notifies the InternationalSearching Authority of that fact. Form PCT/RO/132 may be used for that purpose.

Documents and Diskettes Not to Be Transmitted to the International Searching Authority

294. Annexes or appendices which are not intended to be part of the international applicationshould not be transmitted to the International Searching Authority (paragraphs 149 to 152).Copies of assignments of the rights to the application should not be transmitted since they arenot required for the international phase. Replacement sheets which are filed by the applicant buteither are not required or are not accepted by the receiving Office, for example, whereprecautionary designations are confirmed, should similarly not be transmitted. The receivingOffice should also not transmit PCT-EASY computer diskettes filed with requests inPCT-EASY format referred to in paragraph 165A.

National Security Clearance

295. Where prescriptions relating to national security do not allow the application to be treatedas an international application, neither the record copy nor the search copy must be transmitted.If a national security check must be performed, the record copy must be transmitted to theInternational Bureau as soon as the required clearance has been obtained (Article 27(8),Rule 22.1(a)). If a required national security clearance is refused, the receiving Office notifiesthe applicant and the International Bureau accordingly before the expiration of 13 months fromthe priority date (Section 330 and paragraphs 32 to 34).



CHAPTER XIV[Deleted]CONFIRMATION OF PRECAUTIONARY DESIGNATIONS

Requirements for Confirmation Under Rule 4.9(c)

296. If the receiving Office receives a notice of confirmation of precautionary designations,which may be made on Form PCT/RO/144 or another sheet, it checks that any precautionarydesignations have, pursuant to Rule 4.9(b) and (c), been validly confirmed, that is, whether:

(i) the precautionary designation statement was made in the internationalapplication at the time of filing (such a statement is pre-printed on the request form);

(ii) the notice of confirmation specifies the name or two-letter code of each Statewhose designation is confirmed;

(iii) the notice has been received within 15 months from the priority date;

(iv) the required fees, that is, the designation fee and the confirmation fee (equal to50% of the designation fee for each confirmed designation), have been paid within 15 monthsfrom the priority date; the maximum number of designation fees does not apply(paragraphs 246, 250 and 251).

Requirements Fulfilled

297. Where the confirmation of any precautionary designation has been effected, the receivingOffice notifies (Form PCT/RO/139) the applicant accordingly and promptly transmits a copy ofthat notification together with the notice of confirmation to the International Bureau. Thereceiving Office keeps a copy of the notice of confirmation in its file.

298. If the precautionary designation of the United States of America is confirmed, thereceiving Office checks whether the inventor is also indicated as applicant for the United Statesof America in the request, failing which it proceeds as outlined in paragraphs 91 to 94.

299. Where a designation has been confirmed, the check-box for that specific designation inBox No. V of the request must not be marked. If the applicant furnishes a replacement sheet forthe sheet of the request containing Box No. V, it must not be inserted into the home copy and itmust not be transmitted to the International Bureau. The receiving Office may, however, includean indication concerning the confirmation of that designation in the margin of the request in thehome copy.

Requirements Not Fulfilled

300. If, within 15 months from the priority date, the receiving Office receives from theapplicant a purported confirmation of precautionary designations but the notice is notaccompanied by the (complete) payment of the prescribed fees, it invites (Form PCT/RO/145)the applicant to pay the unpaid amount within 15 months from the priority date. Where thereceiving Office receives a purported confirmation of precautionary designations but, by theexpiration of 15 months from the priority date, no notice of confirmation containing theindication of the designations to be confirmed has been received or no fees have been paid orthe fees paid are insufficient to cover the designation and confirmation fees, the designationsconcerned are considered withdrawn at the expiration of that time limit (Rule 4.9(b)(ii)). In suchcase, the receiving Office notifies (Form PCT/RO/139) the applicant and sends a copy of thenotification to the International Bureau. The procedure under Rule 16bis for payment of feesafter the date on which they are due does not apply.



301. Any precautionary designation which is not confirmed before the expiration of 15 monthsfrom the priority date is regarded as withdrawn by the applicant at the expiration of that timelimit (Rules 4.9(b)(ii) and (c)). Where no notice of confirmation is received, no action isrequired by the receiving Office.

CHAPTER XVRECTIFICATION OF OBVIOUS ERRORS UNDER RULE 91.1

Request for Rectification Submitted to the Receiving Office

302. Decision of Receiving Office. Where the receiving Office receives a request forrectification of an obvious error in the international application or other papers submitted by theapplicant, such as a power of attorney, it checks whether it is competent to authorize therectification of the error as requested. The receiving Office is competent to do so only if theerror is in the request or any other paper submitted to the receiving Office, other than theinternational application itself (description, claims, abstract, any drawings, sequence listingspartof the description). Where the receiving Office is so competent, it authorizes the rectification ifthe error whose rectification is requested is an obvious error as defined in Rule 91.1(b) and therectification is in the language in which the application is filed, provided that, where atranslation of the request is required under Rule 26.3ter(c), the rectification need only be filed inthe language of that translation (Rule 12.2(b)(ii)). Omissions of entire elements or sheets are notrectifiable (Rule 91.1(c)). As regards the correction or addition of a declaration referred to inRule 4.17, see paragraphs 192E and 192F.

303. If the receiving Office authorizes the rectification, it marks the words “RECTIFIEDSHEET (RULE 91.1)” in the middle of the bottom margin of the rectified sheet and proceeds asoutlined in Section 325(a).

304. Notification of Applicant and International Bureau. The receiving Office notifies(Form PCT/RO/109) the applicant of its decision and, where rectification has been refused, ofthe reasons for refusal (Rule 91.1(f) and Section 325(b)). A copy of that notification is sent tothe International Bureau.

305. Where the rectification has been authorized, the notification should promptly be sent bythe receiving Office to the International Bureau. It must reach the International Bureau beforethe technical preparations for international publication have been completed in order to beeffective (Rule 91.1(g)(i) and (g-bis)). Thereafter, rectification cannot be taken into account inrespect of the international phase. See paragraph 337 for completion of technical preparationsfor international publication by the International Bureau.

306. Refusal of Authorization of Rectification. If the receiving Office refuses to authorize therectification, it proceeds in accordance with Section 325(b).

Transmittal to Another Authority of a Request for Rectification

307. If the receiving Office receives a request for rectification of an obvious error in any part ofthe international application other than the request or in other papers or items (such as anucleotide and/or amino acid sequence listings and/or table(s) relating thereto in computerreadable form), it transmits that request together with any proposed replacement sheet to theAuthority competent to authorize the rectification (that is, the International Searching Authority,



the International Preliminary Examining Authority or the International Bureau, as the case maybe) and informs the applicant accordingly (Rule 91.1(e)(ii) to (iv)). It may, instead oftransmitting the request, inform the applicant that the request should be sent to the Authoritycompetent to rectify the error. For the language(s) in which such request for rectification mustbe submitted, see Rule 12.2(b).

Invitation to the Applicant to Request Authorization of Rectification

308. If the receiving Office discovers what appears to be an obvious error in the internationalapplication or any other paper submitted by the applicant, it may invite (Form PCT/RO/108) theapplicant to submit a request for rectification to the Authority competent to authorize therectification (Rule 91.1(d) and (e)).

CHAPTER XVICHANGES CONCERNING THE APPLICANT, INVENTOR, AGENT

OR COMMON REPRESENTATIVE

Receipt of Request to Record a Change

309. The receiving Office may receive from the applicant a request for the recording of achange in the person, name, residence, nationality or address of the applicant(Rule 92bis.1(a)(i)) or a change in the person, name or address of the inventor, the agent or thecommon representative (Rule 92bis.1(a)(ii)). The International Bureau records those changesupon request of the applicant or the receiving Office. The filing of a power of attorneyappointing an agent or common representative who is not yet recorded, or a revocation by theapplicant of record or renunciation of an appointment under Rule 90.6, is considered as arequest to record a change in the person of the agent or common representative.

309A. Where a request for recording a change in the person of the applicant has beensubmitted, the receiving Office should not request any substitute sheets for Boxes Nos. II and IIIof the request if the change can be transferred to the relevant Boxes of the request form withoutadversely affecting the legibility of the sheet of the request form onto which the change istransferred. Where, following a request for the recording of a change under Rule 92bis.1(a)(i) or(ii), information is provided in respect of the indications required under Rule 4.5(ii) and (iii) thathad not been furnished in the request form at the moment of filing the international application,the receiving Office records the indications so provided and notifies the International Bureauaccordingly (Form PCT/RO/113).

310. The receiving Office checks whether the request for recording a change is signed by theapplicant of record or on behalf of that applicant. Where a request is submitted to record achange in the person of the applicant by the applicant of record or the duly appointed agent ofthat applicant, documentary evidence proving the right of a new person to be indicated asapplicant (for example, assignment, succession to the rights of a deceased inventor) is notrequired during the international phase. Furthermore, in order for a change in the person of theapplicant to be recorded, the new applicant need not be a resident or national of a ContractingState. The receiving Office may nevertheless draw the attention of the applicant to the fact that,if there is no applicant from any Contracting State at the time when a demand for internationalpreliminary examination may be filed, the applicant(s) will not be entitled to file such a demand.



311. Where a person (“new applicant”), who is not the applicant of record, requests that achange be recorded in the person of the applicant, of the agent or common representative,documentary evidence must be submitted regarding the right of that new applicant to theapplication or the right to request such a change on behalf of the applicant of record. Wheresuch evidence has not been furnished, the receiving Office invites that person to furnish therequired evidence before it proceeds with the request to record the change. If the new applicantis to be represented by the same agent who represented the former applicant, a new power ofattorney must be submitted signed by the new applicant. If the new applicant is to berepresented by a new agent, a power of attorney must also be submitted. In both cases, ifcorrespondence signed by the former or a new agent is received but no power of attorney hasbeen received, the receiving Office invites the new applicant to submit a power of attorney.However, where the receiving Office has waived the requirement under Rule 90.4(b) that aseparate power of attorney be submitted to it, the receiving Office does not invite the newapplicant in either of the above-mentioned cases to submit a power of attorney.

Notification of International Bureau

312. The receiving Office notifies (Form PCT/RO/113) the International Bureau of the requestfor recording a change. For transmittal of a power of attorney, a revocation of a power ofattorney or a renunciation of appointment, the receiving Office uses Form PCT/RO/123.

313. [Deleted]

CHAPTER XVIIWITHDRAWAL OF THE INTERNATIONAL APPLICATION,

ANY DESIGNATION OR ANY PRIORITY CLAIM

Receipt of Notice Effecting Withdrawal of the International Application, any Designationor any Priority Claim Under Rule 90bis.1, 90bis.2 or 90bis.3

314. The applicant may file with the receiving Office a notice of withdrawal of theinternational application (Rule 90bis.1(b)), of any designation (Rule 90bis.2(d)), or of anypriority claim (Rule 90bis.3(c)), or of a kind of protection. The applicant may also file suchnotice of withdrawal directly with the International Bureau. Any notice of withdrawal has to besigned by all applicants. Upon receipt of such a notice, the receiving Office marks the date ofreceipt on the notice of withdrawal and checks whether the withdrawal is effective, that is,whether:

(i) the notice of withdrawal is received within the time limit referred to inRule 90bis.1(a), 90bis.2(a) or 90bis.3(a), as the case may be;

(ii) the notice of withdrawal is signed by or on behalf of all the applicants.

315. A notice of withdrawal of the international application must be signed by the applicant or,if there are two or more applicants, by all of them or, on their behalf, by their duly appointedcommon agent or common representative. Where a power of attorney or an authorization to signon behalf of a legal entity is not yet submitted when the notice of withdrawal is received, thereceiving Office requests the applicant to submit it.



316. An applicant who is considered to be the common representative under Rule 90.2(b), thatis, the “deemed” common representative (paragraph 24), may not sign a notice of withdrawal onbehalf of the other applicants (Rule 90bis.5).

317. If the above-mentioned requirements (paragraphs 314 and 315) are fulfilled, thewithdrawal is effective upon receipt of the notice of withdrawal by the receiving Office(Rules 90bis.1(b), 90bis.2(d) and 90bis.3(c)).

318. A notice of withdrawal of the international application may state that the withdrawal is tobe effective only on the condition that international publication can still be prevented(“conditional withdrawal”). In such case, the withdrawal is not effective if the condition onwhich it was made cannot be met, that is, if the technical preparations for internationalpublication have already been completed. For completion of technical preparations forinternational publication, see paragraph 337.

319. For designations which have been withdrawn, the receiving Office may make anindication to that effect in the margin of the relevant sheet of the home copy. In any case, anysubstitute sheet submitted by the applicant in connection with the withdrawal of designationsshould neither be inserted into the home copy nor transmitted to the International Bureau.

320. If the withdrawal of a designation results in a person being indicated as applicant for thepurposes of a State which is no longer designated, the receiving Office proceeds as indicated inparagraphs 94 and 95 and 161 to 165.

321. Where the priority date of the international application has changed following withdrawalunder Rule 90bis.3 of a priority claim, any date which is computed from the original prioritydate, and which has not already expired, is recomputed from the priority date resulting from thatchange. Time limits computed from the original priority date which have already expired are notreinstated (Rule 90bis.3(d)).

Transmittal of Notice Effecting Withdrawal

322. The receiving Office promptly transmits (Form PCT/RO/136) to the International Bureauany notice effecting a withdrawal under Rule 90bis.1, 90bis.2 or 90bis.3 (Form PCT/RO/136),of any notice effecting a withdrawal of kinds of protection (Form PCT/RO/132), with anindication of the date of receipt of the notice. If the record copy has not yet been transmitted tothe International Bureau, the receiving Office transmits the notice of withdrawal to that Bureautogether with the record copy (Section 326(a)). In the case of a withdrawal of the internationalapplication or of the (earliest) priority claim, it is often the applicant’s intention to prevent orpostpone international publication of the application. In such cases, the receiving Office musttake into account the fact that the International Bureau will only be in a position to prevent orpostpone that publication if the notice of withdrawal reaches it before technical preparations forinternational publication have been completed; therefore, the receiving Office should preferablyalso send the notice of withdrawal to the International Bureau by facsimile transmission.

323. If the search copy has already been transmitted to the International Searching Authorityand the notice effects withdrawal of the international application or of the priority claim, thereceiving Office promptly transmits a copy of the notice to the International SearchingAuthority (Section 326(b)). For refund of the search fee where the international application hasbeen withdrawn, see Sections 322 and 326(c).



324. Where the international application is withdrawn before the search copy is transmitted tothe International Searching Authority, the receiving Office does not transmit the search copy(Section 326(c)). If a priority claim is withdrawn, see Section 326(d).

CHAPTER XVIIIITEMS TO BE TRANSMITTED TO ANOTHER AUTHORITY

Items to Be Transmitted to the International Bureau

325. Where the receiving Office receives from the applicant items which should have beenfiled with the International Bureau, it marks the date of receipt on the items concerned andtransmits them promptly to the International Bureau. The receiving Office may inform theapplicant about the transmittal. This applies, in particular, to the following items:

(i) references to deposited microorganisms or other biological material filed laterthan the international application (Rule 13bis.3 and paragraphs 228 to 234);

(ii) a request to publish indications relating to a priority claim considered not tohave been made (Rule 26bis.2(c) and paragraphs 171, 172, 175 and 178);

(iii) a request to publish a request for rectification of an obvious error where therectification was refused under Rule 91.1(f) together with substitute sheets that might have beenproposed by the applicant (paragraph 306);

(iv) the correction or addition of declarations relating to national requirements underRule 4.17 (Rule 26ter and paragraph 192F);

(v) amendments to the claims filed under Article 19 (Rule 46.1);

(vi) a notice of correction of addition of a declaration under Rule 26ter.1(Section 317).

326. The above listed items, as well as other items filed later than the international application,such as confirmation of precautionary designations, corrections of formal defects, rectificationsof obvious errors under Rule 91 or requests for recording of changes under Rule 92bis, mustreach the International Bureau before technical preparations for international publication arecompleted so that the publication will reflect all the changes made, see paragraph 312. For thecontents of the publication of the international application, see Rule 48.2. For completion oftechnical preparations for international publication, see paragraph 337.

327. For priority documents, see paragraphs 179 to 191. For the transmittal of later filedpowers of attorney, see Section 328 and paragraphs 309 to 313.

Transmittal of Demand Under Rule 59.3

328. Where a demand under Chapter II of the Treaty is submitted to the receiving Office andonly one International Preliminary Examining Authority is competent, the receiving Officeproceeds as outlined in Rule 59.3(a) and (f), that is, it marks the date of receipt on the demandand

(i) it either forwards the demand to the International Bureau, which will in turntransmit it to the competent International Preliminary Examining Authority, or

(ii) it transmits it directly to the competent International Preliminary ExaminingAuthority.



The receiving Office notifies (Form PCT/RO/153) the applicant accordingly and sends a copyof that notification to the International Bureau or to the competent International PreliminaryExamining Authority, as the case may be.

329. Where a demand under Chapter II of the Treaty is submitted to the receiving Office andmore than one International Preliminary Examining Authority is competent, the receivingOffice proceeds as outlined in Rule 59.3(a) and (f), that is, it marks the date of receipt on thedemand and

(i) it either forwards the demand to the International Bureau, which will in turninvite the applicant to indicate the competent International Preliminary Examining Authority, or

(ii) it invites (Form PCT/RO/154) the applicant to indicate, within 15 days from thedate of the invitation or 19 months from the priority date, whichever is later, or before theexpiration of the time limit under Rule 54bis.1(a), the competent International PreliminaryExamining Authority to which the demand should be transmitted. Where such indication istimely furnished, the receiving Office transmits the demand to that Authority(Form PCT/RO/153). The receiving Office notifies (Form PCT/RO/153) the applicantaccordingly and sends a copy of that notification to the International Bureau or to the competentInternational Preliminary Examining Authority, as the case may be.

330. Any demand so transmitted to the competent Authority will be considered to have beenreceived by the receiving Office on behalf of that Authority on the date marked on it(Rule 59.3(e)).

331. Where the demand is submitted after the expiration of 19 months from the priority date toa receiving Office, and the time limit under Article 22(1), as in force from April 1, 2002 doesnot apply in respect of all designated Offices, the receiving Office shall promptly notify theapplicant accordingly the applicant’s attention should be drawn to the fact that the time limitunder Article 39(1)(a) does not apply (Section 334). Forms PCT/RO/153 and PCT/RO/154contain a check-box for that purpose. The applicant should, in such case, also be informed bytelephone or facsimile transmission. Since the receiving Office is generally not in a position todetermine whether the date of receipt of the demand is after the expiration of the applicable timelimit under Rule 54bis.1(a), the applicant’s attention should be drawn to the fact that, should theapplicable time limit have already expired, the competent International Preliminary ExaminingAuthority will notify the applicant accordingly at a later date. Forms PCT/RO/153 andPCT/RO/154 also contain a check-box for that purpose.

332. Where the applicant has not, within the time limit referred to in the invitation(Form PCT/RO/154), indicated the competent International Preliminary Examining Authority towhich the demand should be transmitted, the demand is considered not to have been submittedand the receiving Office so declares (Form PCT/RO/155).

CHAPTER XIXMISCELLANEOUS

Expressions Not to Be Used (Rule 9)

333. If the receiving Office notes that the international application contains expressions,drawings or statements not to be used as defined in Rule 9.1, such as statements disparaging the



products or processes of any particular person other than the applicant, or the merits or validityof applications or patents of any such person, it may proceed in accordance with Rule 9.2.Form PCT/RO/112 is used for that purpose, copies being sent to the International Bureau and tothe International Searching Authority.

Certifying Copies of the International Application

334. The applicant may request the receiving Office to prepare a certified copy of theinternational application as filed with it as receiving Office (Rule 20.9). If any prescribed feehas not yet been paid, the receiving Office invites (Form PCT/RO/128) the applicant to pay therequired amount, upon receipt of which the certified copy is prepared and furnished to theapplicant (Form PCT/RO/122) or, where the applicant has made a request for priority documentunder Rule 17.1(b) (paragraph 183), to the International Bureau. The certified copy mustcontain a copy of the international application as originally filed as well as corrections(including rectifications) thereto. Where a sheet was replaced, it is recommended to insert thereplacement sheet into the certified copy immediately after the sheet originally filed. For arequest to certify a copy of an international application and transmit it to the InternationalBureau, see paragraphs 183 to 191.

Notification About Right to Practice of Agent Before Receiving Office

335. Where the receiving Office receives from the International Bureau, the InternationalSearching Authority or the International Preliminary Examining Authority a request forinformation as to whether a person has the right to practice before the receiving Office, thatOffice informs that Bureau or Authority in compliance with Rule 83.2. Such information, whichis binding for the respective Authority, should be provided on Form PCT/RO/148.

Keeping of Records and Files

336. The receiving Office keeps the records relating to the international application orpurported international application for at least 10 years from the international filing date or,where no international filing date is accorded, from the date of receipt of the purportedapplication (Rule 93.1). Records, copies and files may be kept as photographic, electronic orother reproductions, provided that the reproductions are such that the obligations to keeprecords, copies and files under Rule 93.1 to 93.3 are met (Rule 93.4).

Completion of Technical Preparations for International Publication by the InternationalBureau

337. The international application is published promptly after 18 months from the priority dateexcept where early publication has been requested (Article 21(1) and (2)). Internationalapplications are usually published on Thursdays, and technical preparations for internationalpublication are generally completed 15 calendar days before the actual publication date. Whenthere is no international publication on a given Thursday because it is a day when theInternational Bureau is not open for business, publication may, but does not always, take placeon the preceding day (Wednesday). In such cases, the receiving Office should contact theInternational Bureau for confirmation of the exact day of publication. A document, notificationor communication which is to be published by the International Bureau (Rule 48.2), and mightnot reach the International Bureau before the date of completion of technical preparations if sentby ordinary mail, should be transmitted by facsimile, in addition to the original being sent bymail.



Certain Kinds of Documents to Be Returned to the Applicant

338. The receiving Office may receive documents from the applicant which are not requiredfor processing the international application. Examples of such documents are translations of thepriority document, assignment documents, powers of attorney for the national phase only,information disclosure statements for the national phase, duplicate copies where the receivingOffice only requires a single copy to be submitted, etc. Such documents should be returned tothe applicant because the applicant may need them before the national or regional Officesduring the national or regional phase.

[End of Annex II]